How to Create a Valuable Patent Portfolio
In my last post, Why is it Important to Create a Patent Portfolio “Worthy of” Contingent Fee Representation?, I noted that few patent portfolios meet the criteria for contingent fee representation, and to keep options open in the future one should prosecute patents with contingent fee enforcement in mind.
Many of my future posts will talk about what "contingent fee patent lawyers" look for when deciding whether to take a case. When you read this phrase you should realize that I am also talking about how to create a "valuable patent portfolio."
Why are the two synonymous? Imagine that you are a real estate agent. Potential Client A comes to you with a piece of land they want to sell. This piece of land has clear title in a popular area. Potential Client B wants to sell a piece of land in a dangerous area with possible environmental issues and with a clouded title. Which would you agree to devote your time and effort to sell for a commission?
Turning back to patents, a "valuable patent portfolio" will have a clear infringement case and have minimal issues that need to be argued about by lawyers in court. Even if you have hired an hourly rate lawyer, having such a patent portfolio should reduce unnecessary arguments and the time that takes to resolve those arguments.
Contingent fee lawyers look for cases with relatively clear infringement liability. In an ideal case, the only issue left to be resolved would be the issue of damages. In other areas of the law, it may be possible to find cases that have clear liability. With patent cases, there is arguably no case with clear patent validity and infringement liability. However, there are certain steps that patent owners can take to reduce risk and make the patent case as clear on liability as reasonably possible.
Over the last several decades my predecessors Steven G. Lisa and Gerald Hosier have developed criteria to determine which potential patent enforcement matters are of a high enough quality that they are appropriate for contingent fee representation. With an understanding of the necessary criteria and the ways a patent case may be lost, patent owners and applicants can make better decisions while building their portfolio to minimize their risk and maximize the risk to potential infringers. As a result, the value of the portfolio will increase.
In later posts, I will detail the criteria I look for when considering a contingent fee patent representation. In the next post, I will lay the foundations for these criteria and share some of the many reasons why patents can be lost or held not infringed.