Lawyers Teaming with Experts for Patent Mining

According to Bob Ambrogi writing for IMS Expert Services' Bullseye Newsletter, one of a company's first steps towards discovering hidden value in its intellectual property may be to group its patents into large buckets using technology experts to decide which patents have commercial potential and which did not. As for the patents that went into the commercialization bucket, experts then help the company map how the patented technology applies to other industries and to actual products on the market. With that knowledge in hand, the company, through its lawyers, could pursue licensing agreements or, if necessary, litigation.

"Well before getting to the point of commercializing its IP," Bill Hueter of IMS explains, "a company may need help starting out at step one, learning how to identify what's in its portfolio, how to organize it by business units, and how to compare it to other companies." The use of experts in this early stage of the process "can also free-up knowledgeable persons inside the company for other work," adds Bill Heinze, an attorney with Thomas, Kayden, Horstemeyer and Risley in Atlanta.

At larger companies, patent mining is often spearheaded by the general counsel. But outside counsel too often overlook their role in the process, Hueter suggests. IP lawyers are as much business consultants these days as they are legal consultants. They should ensure that their clients, whether large or small, are mining the full value of their Intellectual Property and they should help provide whatever resources their client requires to reach that end. "If the outside lawyer can help add value to the client's business," says Hueter, "the client will place greater value in its relationship with that lawyer."

Still many law firms prefer to stay inside their comfort zone with legally-intensive patent prosecution services at the beginning of the patent process, and licensing and enforcement services at the end of the process. "Good outside counsel will understand their client's business well enough to at least focus the overall patent mining process, if not drive it home to the bottom line when the first royaly check is cashed."