Developing a Strong IP Portfolio
Fitch Even helps clients apply the same rigor and quality of thought to the designing, building, maintaining, and leveraging of their intellectual property asset portfolios as they extend to other decision-making processes. Our goal is to integrate use of IP assets into your overall business goals and plans. We understand how to help a business make informed decisions regarding what to protect, how to protect it, when and where to seek protection, and how long to maintain protection. We also have the skills and experience necessary to leverage those IP assets in the marketplace and courts around the world.
Strategic Portfolio Assessment
In undertaking a portfolio assessment, our lawyers study both the technology spaces in which a client operates and the market opportunities that the client seeks to pursue. We are also skilled in developing tactics to expand a client’s home-grown IP portfolio through licensing or acquisitions. Similarly, we assist clients with monetizing their IP portfolios via selling, licensing, or enforcing. We work closely with our clients to ensure that, no matter which strategy is pursued, their business objectives remain at the forefront throughout the process.
Core Tenets of IP Portfolio Management
Our business-focused intellectual property portfolio management rests on these tenets:
- Know What You Have. This is far more than doing an inventory of a business’ IP assets (patents, trade secrets, trademarks, and copyright registrations). We provide understandable, meaningful portfolio studies. We identify and categorize the IP of a client, and then work with the client to understand how these assets fit in with their current and future business strategies. This initial step allows our clients to efficiently drive an informed IP asset acquisition, maintenance, and monetization program.
- Know What You Need. We help clients to coordinate business plans, industry intelligence, technology road maps, and strategic planning and to develop cohesive knowledge management tools that can readily hone the intellectual property goals of a business at all levels.
- Acquire What You Need. In addition to providing the core services of organically pursuing IP assets, we also help to identify opportunities to acquire needed assets through licensing, acquisitions, joint business ventures, or other strategic business arrangements.
- Divest What You Do Not Need. Divestures help to reduce costs associated with maintaining IP assets that do not provide competitive advantage or revenue. We assist in the analysis of the IP portfolio to identify such assets and advise on the best ways to divest them, such as selling, abandoning, or licensing to others.
Navigating Non-Practicing Entities (NPEs)
Fitch Even has a sophisticated understanding of the portfolio objectives for all patent holders including NPEs. We are often able to resolve disputes with NPE’s in a cost-effective manner. However, we also are able help clients take a stand against an NPE when appropriate.
Innovative Portfolio Management Strategies
Fitch Even’s IP portfolio management approach helps clients implement and maintain portfolio review processes that ensure their IP spend each year matches their business goals. As no two clients have the same business needs or face the same market challenges, Fitch Even lawyers are skilled at tailoring each client’s portfolio management plan so that it will continue to serve them well into the future despite their ever-changing IP portfolios and market objectives. Our goal is to be not only a trusted advisor but a true business partner to you in successfully using your IP assets to maximize revenue.
Case Studies
Client: A leading mechanical and electrical communications company with a diverse patent portfolio
Problem: The client’s products combine mechanical and electrical elements that lend themselves to innovation in a variety of technical fields. Fitch Even protects this unique portfolio with strong, carefully crafted patent filings, but competitor obtained a potentially disruptive patent. Other competitors create products closely related to the client’s innovations.
Solution: Fitch Even instituted a reexamination proceeding at the United States Patent and Trademark Office (USPTO) to request a finding of invalidity of the competitor’s patent, in part, over the client’s own patent filings. Fitch Even further instituted patent enforcement proceedings against various competitors who were using the client’s technology.
Result: Thanks to the strength of the patents our attorneys drafted and the litigation strategy we employed to enforce them, Fitch Even resolved each of the lawsuits, securing favorable settlement and licensing agreements that maintained our client’s market position for their products. Fitch Even also obtained a decision from the USPTO invalidating one competitor’s patent in part over the client’s own patent filings prepared by Fitch Even.
