Perkins Coie is a leader in helping clients increase the strength, diversity and value of their intellectual property portfolios. We understand the important role intellectual property plays in a company’s business plan.
With corporate patent portfolios 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 skillfully assists companies in creating, managing and monetizing intellectual property portfolios. Our attorneys combine technical, legal, business and valuation knowledge and experience 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.
Perkins Coie’s experience goes far beyond technical patent assessments. Our cross-functional teams of patent litigation, prosecution, technology transaction and antitrust attorneys are regularly engaged to counsel clients and execute critical intellectual property strategies. We regularly provide board-level presentations detailing strategies for maximizing competitive impacts using IP assets.
Whether we work with a multinational Fortune 500 company or a venture startup client, our approach is backed by significant experience in developing sophisticated legal strategies to accomplish key business goals and building strategic industry relationships.
Perkins Coie’s Proprietary Patent Databases
Our use of third-party and in-house-developed software tools, in addition to our unique tiered-review approach, differentiates us from our competitors by allowing us to automate, streamline and scale projects from a light review to intensive analysis in accordance with our clients’ needs, business objectives and budget.
Our proprietary patent databases capture, organize, synthesize and place at our clients’ fingertips essential information about each portfolio asset and its offensive and defensive strategic value to ensure immediate access to the right assets for responding to any business situation. The databases also give clients access to immediate report generation and decision-level statistics regarding the breadth, strength and competitive impact of each asset and the overall portfolio.
Few firms, if any, in the country have our patent and industry experience, let alone a team of over 75 attorneys with degrees in electrical engineering and computer science, and a dedicated team of analysts who conduct research, analysis and due diligence on patent-related matters and transactions. When combined with our depth of experience in technology transaction, licensing and antitrust, Perkins Coie offers vast resources, unmatched experience and blue-ocean thinking to achieve key business strategies. Here are just a few ways we can help achieve your portfolio and business goals.
Patent Analysis Team (PAT)
Our Patent Analysis Team focuses on mining, authenticating, analyzing and organizing data relating to patent portfolios. The team assists attorneys in translating patent data into meaningful visualizations to advise clients on a wide range of questions related to portfolio strength, weaknesses and value. Our PAT also performs due diligence for patent portfolio transactions, including acquisitions, sales and licensing transactions.
A thorough understanding of a company's portfolio is essential for achieving key business objectives. Our attorneys undertake an in-depth review of patent portfolios to identify potentially infringed or underutilized assets. We use custom-built tools to efficiently triage and analyze large portfolios, maintain standardization, capture important statistical data and create a powerful database of a company's patent portfolio that is uniquely organized with offensive, defensive and monetization goals in mind.
- Providing quantitative and qualitative analysis of patent portfolios to identify valuable assets for offensive, defensive, gap-filling and revenue-generating purposes.
- Identifying portfolio strengths and weaknesses to assess risks and identify opportunities with specific competitors or industries in mind.
- Visually mapping key value-driver patents onto competitor targets to depict infringement.
- Identifying unprotected technologies in the marketplace and strategies for capturing those technologies and protecting client innovation.
- Creating a custom database of a client’s patent assets, strategic use for each asset and valuation statistics.
Competitor and Industry Landscape Analysis
Competition and the recent surge in patent litigation underscore the need to fully understand a company’s industry and its competitive dynamics. Our attorneys evaluate industry and competitor portfolios to help our clients better understand and assess competitive impacts and to develop both defensive and offensive strategies for effective competition. We also work with our clients to identify unprotected technologies in the marketplace and strategies for acquiring those technologies to spur and protect innovation. Analytic services include the following:
- Identifying and assessing technical and legal strengths and weaknesses of an industry or a competitor’s patent portfolio.
- Assessing applicable industry landscapes and the competitive impact of patent portfolios and acquisitions.
- Developing analytics to understand key areas covered by a competitor's portfolio and the strength of that portfolio.
- Building an offensive and defensive arsenal enabling a company to protect itself against identified threats at a moment's notice.
Value Creation and Monetization Models
Working closely with clients, Perkins Coie’s seasoned attorneys can build sophisticated licensing programs to reach a wide variety of goals, from enhancing financial returns to achieving strategic business relationships. We think creatively to maximize campaign potential and achieve key business strategies by using these resources:
- Strategic Licensing Campaigns: Map patents onto products in core and adjacent industries, design and manage licensing campaigns, draft and negotiate license agreements, and litigate, if necessary.
- 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 patent 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, but also allow 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 and Sales
Patent acquisitions are not “one size fits all.” Whether a company is looking to acquire patents to protect against litigation, to fill a portfolio gap or for offensive purposes, our patent and transactional attorneys can assist in identifying and analyzing assets of interest, ensuring antitrust compliance and negotiating the end deal. Our work includes:
- Triaging and analyzing large portfolios to identify key assets for potential acquisition or divesture.
- Determining economic valuation of assets.
- Drafting and negotiating deal documents, conducting due diligence and structuring solutions to meet client objectives.
- Navigating cross-border transactions.
- Conducting and managing competitive assessments to reduce antitrust risk.
- Completing Hart-Scott-Rodino notification and clearance, if applicable.
Perkins Coie’s patent valuation skills and experience differentiate us from the competition. Our attorneys have significant depth in determining the economic value of clients’ intellectual property, ranging from a single asset to multimillion-dollar portfolios. Our valuation skills ensure that all business, legal and technical issues are considered when ascertaining a proper valuation and include the following:
- Working closely with valuation experts to build customized valuation models that enable more precise estimates.
- Providing 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 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.
Merger and Acquisition Due Diligence
Perkins Coie attorneys are experienced at conducting due diligence investigations to assist with mergers and acquisitions for clients in all technology areas. Companies considering commercial transactions need to have a thorough understanding of the value and risks associated with the transfer of intangible assets as part of a deal, including which IP assets are included, the nature and value of those assets and what limitations or risks are associated with those assets.
Perkins Coie assists clients with IP due diligence matters ranging from investment decisions for venture capital financing to multimillion-dollar acquisitions. We tailor our due diligence process to fit a client’s objectives and to the type and size of the transaction. We efficiently determine the total value of the IP portfolio, uncover IP roadblocks that may negatively affect the value of the deal and develop strategic options for achieving business objectives.
Venture Capital and Private Equity Investment
Our multidisciplinary teams regularly assist clients with patent due diligence matters ranging from investment decisions for venture capital financing to multimillion-dollar acquisitions. Many corporate transactions have IP issues that require careful consideration. Perkins Coie concentrates its efforts in seller-, buyer- and investor-side intellectual property due diligence for high technology and life sciences technologies. We focus on clients’ needs and intended business strategy while advising on reducing IP risks, providing IP valuation and identifying opportunities to strengthen the IP portfolio. Our counsel includes:
- Assisting clients in making informed decisions regarding potential deals, optimized deal outcomes and risk allocation with respect to strategic business initiatives.
- Achieving business goals and protecting or leveraging IP assets through landscaping analysis, patent portfolio audits and freedom-to-operate assessments.
- Analyzing 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.
- Providing deal structuring with respect to IP risk allocation and drafting ancillary agreements in connection with the transfer of IP.
IP Risk Management
Our cross-disciplinary team ensures that all legal ramifications of a deal are considered. Our collaborative approach ensures that a strategy does not run into issues outside of the IP itself. In particular, our tax attorneys routinely assist in developing tax strategies to help maximize revenue recognition from IP assets. In addition, we often involve our antitrust and unfair competition attorneys to help proactively identify antitrust risks inherent in portfolio acquisition, licensing and sales.