Licensing Strategy Formulation and Implementation
Patent maintenance decision made easy
The Situation
PatentHolder Inc., a large Canadian corporation, held a large patent portfolio
and was paying out significant amounts for patent maintenance fees. Decisions
as to whether to pay the fees or abandon the patents were routinely necessary.
If the technology was clearly out-dated and obsolete, it was easy to decide
to abandon the patent and cease paying the maintenance fee. If the technology
provided PatentHolder with a competitive advantage or had been licensed out,
it was easy to decide to continue to submit the patent maintenance fees.
However, in some cases, PatentHolder was not utilizing the patented technology
themselves, but believed that the technology was still state-of-the-art and
that there may be a potential to license others.
The Challenge
In order effectively make patent a maintenance decision for a selected PatentHolder
patent, PatentHolder wished to assess the potential for licensing the patent.
The Solution
To assist PatentHolder, Vertex first reviewed the patent and related PatentHolder
information. This information was then supplemented with information available
from public sources and through carrying-out telephone interviews of industry
participants. Vertex then assessed all of the information gathered and developed
and documented its conclusions and recommendations in a brief report.
The Result
Armed with an understanding of the market need for its patent and the potential
importance and relevance of the patent in question, PatentHolder was able
to make an informed patent maintenance decision. It also obtained a preliminary
understanding of who might be approached regarding licensing the patent and
related technology.
