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Intellectual PropertyValue Group
SOPHISTICATED LEGAL SOLUTIONS FOR INTELLECTUAL PROPERTY ASSETS
Perkins Coie’s IP Value Group understands the important role intellectual property plays in a company’s business plan. Our cross-functional teams, consisting of patent litigation, prosecution, IP transactional and antitrust attorneys, are regularly engaged to develop and execute critical intellectual property strategies.
Whether a client is a multinational Fortune 500 company or a venture start-up, our attorneys have significant experience and
expertise in developing and executing sophisticated legal strategies targeted at accomplishing key business goals and building
strategic industry relationships.
No other firm can match the depth of our technical bench, which includes 85+ attorneys and agents with electrical engineering
degrees and computer science degrees, 35+ with other technical degrees and 40+ with life sciences degrees. 25+ of our patent
attorneys and agents hold Ph.Ds, while 40+ hold Master’s degrees.
Meet our cross-functional team of experts
RECENT IP RECOGNITION
• Ranked as one of the top law firms for Patent Quality by Intellectual Asset Management (IAM) magazine and Ocean Tomo
• Ranked 3rd among “The Firms That Landed The Most Patent Suits Last Year“ for defense cases per Lex Machina
• Ranked 5th-most-hired firm in the country for patent litigation defense and 6th-most-hired firm for overall patent litigation by Corporate Counsel
• Ranked 6th among all law firms nationwide handling post-grant proceedings per Docket Navigator
• Ranked one of the top 10 law firms for representing PTAB petitioners by Managing Intellectual Property
• Ranked top national firm for “litigation milestones” for patentee cases and 4th for defense cases per Docket Navigator
• Ranked nationally in Intellectual Property by Chambers USA
• Ranked 7th-largest IP practice globally by Law360
• Named Patent Law Firm of the Year by U.S. News - Best Lawyers® for two consecutive years
Perkins Coie is a leader in helping clients maximize the strength,
diversity and value of their intellectual property portfolios. Our
attorneys combine technical, legal, business and valuation expertise
with our custom software tools to develop tailored, comprehensive
legal strategies that maximize the value of our clients’ patent
portfolios and further their most important business strategies.
With patent portfolios recently commanding multibillion-dollar price
tags, investors and boards of directors are actively assessing ways
to capitalize on the value creating potential of their patent assets.
Perkins Coie is unparalleled in its ability to help companies structure
creative solutions to extract value from their intellectual property
portfolio while protecting key business technologies.
• Representing a Fortune 500 company in analyzing more than 500 software patents in a four-day period for a high-profile acquisition.
• Representing a major multinational technology company in the assessment and acquisition of 1,700 wireless essential patent assets related to 3G, 4G and WiFi technologies.
• Representing a major multinational company in the analysis and acquisition of 200 patents covering video codec and streaming technology.
• Representing a major multinational technology company in the acquisition of 44 wireless essential patents related to LTE, WiFi and networking technologies.
• Analyzing client, competitor, and industry patent portfolios for multiple companies in various industries.
• Structuring sophisticated patent based venture lending transactions for major investment management firm.
• Structuring divestiture and licensing of IP assets to a spin-out operational business for a major Wall Street financial institution.
OUR RECENT REPRESENTATIVE EXPERIENCE INCLUDES:
IP Value Group
Perkins Coie’s IP Value Group understands that managing intellectual property is a critical component of any
business strategy. Our IP Value Group is unparalleled in its ability to efficiently assist companies in their efforts
to generate revenue streams and achieve key business strategies by leveraging intellectual property assets.
We go far beyond technical patent assessments and regularly provide board-level presentations detailing
patent based strategies for maximizing competitive impacts.
Perkins Coie’s use of third-party and in-house developed software tools, in addition to our unique tiered-review
approach, differentiates Perkins Coie from its competitors by allowing us to automate, streamline and scale
projects from a light review to intensive analysis in accordance with the client’s needs, business objectives and
budget. Our proprietary “IP Portal” captures, organizes, synthesizes and places essential information about
each portfolio asset and its offensive and defensive value at our client’s fingertips, to ensure immediate access
to the right assets for responding to any business situation.
Few firms, if any, have our patent and industry expertise, let alone a team of over 85+ attorneys and agents
with degrees in electrical engineering and computer science. When combined with our technical transaction,
licensing and antitrust expertise, Perkins Coie offers vast resources, unmatched experience and blue-ocean
thinking to achieve key business strategies.
PORTFOLIO ASSESSMENT COMPETITOR & INDUSTRY LANDSCAPE ANALYSIS
• Quantitative and qualitative analysis of patent portfolios to identify valuable assets for offensive, defensive, gap-filling and revenue-generating purposes.
• Identify portfolio strengths and weaknesses to assess risks and identify opportunities as compared to specific competitors or industries.
• Visually mapping key value driver patents on to competitor targets to depict infringement.
• Identify unprotected technologies in the marketplace and strategies for capturing those technologies and protecting your innovation.
• Create a custom database of a client’s patent assets, strategic use for each asset and valuation statistics.
• Identify and assess technical and legal strengths and weaknesses of an industry or a competitor’s patent portfolio.
• Assess applicable industry landscapes and the competitive impact of patent portfolios.
• Develop analytics to understand key areas covered by a competitor’s portfolio and the strength of that portfolio.
• Build an offensive and defensive arsenal enabling a company to protect itself against identified threats at a moment’s notice.
How We Can Help
HERE ARE JUST A FEW WAYS WE CAN HELP ACHIEVE YOUR PORTFOLIO AND BUSINESS GOALS:
VALUE CREATION MODELS
• IP Collateralization – Valuation, structural design and support for IP collateralization transactions, including patent-backed venture lending or other IP-based secured transactions.
• Spin Outs – Structure and implement business or product driven spin-outs, including licensing of patents and other IP assets.
• R&D Financing – Create and implement vehicles for financing research and development activities, proof of concept and commercialization, patent prosecution, and product marketing services in exchange for equity or other consideration in future companies implementing the new technologies.
• Patent Auctions – Comprehensive due diligence, valuation and transactional support for both seller and buyer participants in patent auctions.
• Technology Transfer – Work with universities and research institutes worldwide to reach license transaction terms that provide value to inventors and their institutions, while also allowing licensees to obtain venture or other financing and get products to market.
• Innovative Value Creation Models – Design sophisticated IP-based value creation vehicles and avenues to enhance current and/or future business objectives.
PATENT ACQUISITIONS & DIVESTITURES VALUATION SERVICES VC & PRIVATE EQUITY INVESTMENT / M&A DUE DILIGENCE
• Triage and analyze large portfolios to identify key assets and map those assets on industry targets and standards.
• Determine economic valuation of assets.
• Draft and negotiate deal documents and structure solutions to meet client objectives.
• Prepare and position portfolios for divestiture to maximize value to company’s bottom line.
• Navigate cross-border transactions.
• Conduct and manage competitive assessment to reduce antitrust risk.
• Complete Hart-Scott-Rodino notification and clearance, if applicable.
• Work closely with valuation experts to build customized valuation models that enable more precise estimates.
• Provide qualitative analysis and recommendations using comprehensive methods including but not limited to:• Discounted Cash Flow
Methodology – calculating the current value of a patent based on the present value of prospective revenues generated over the patent’s lifetime.
• Comparable Revenue Methodology – calculating the current value of a patent based on the revenue generated by similar technologies.
• Cost of Reasonable Alternative Methodology – calculating the cost to develop or acquire reasonable alternatives to the patent/portfolio.
• Analyze all aspects of IP due diligence in relation to the transfer of IP assets and rights for licensors, licensees, developers, venture capitalists, investment banks and technology companies in all areas of high technology and life sciences.
• Provide deal structuring with respect to IP risk allocation and draft ancillary agreements in connection with the transfer of IP.
STRATEGIC LICENSING CAMPAIGNS –
MAP PATENTS ON TO PRODUCTS IN CORE AND ADJACENT INDUSTRIES, DESIGN AND MANAGE LICENSING CAMPAIGNS, DRAFT AND NEGOTIATE LICENSE AGREEMENTS AND LITIGATE, IF NECESSARY.
Some jurisdictions in which Perkins Coie LLP practices law may require that this communication be designated as Advertising Materials. | May 2017
Contact UsAMY SIMPSON | PARTNER
+1.858.720.5700
STEVE BISHOP | PARTNER
+1.206.359.3129
CHRISTOPHER DALEY-WATSON | PARTNER
+1.206.359.3599
DANA HAYTER | PARTNER
+1.415.344.7106
PerkinsCoie.com/IP_Value_Group
