Ocean Tomo, a part of J.S. Held, assists clients in developing and executing strategic patent monetization programs.
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We develop an appropriate intellectual property (IP) strategy in the context of client monetization needs by leveraging expert insight into patent law, case rulings, and legislative changes, analyzing macro trends and patent assets, assigning value expectations to strategic IP options, and utilizing our extensive transaction experience and network of relationships in the IP space.
Each monetization project begins with an analysis of current and expected future sector and macro trends noting the expected role to be played by Intellectual Property (IP), and patents in particular. This analysis leverages existing Ocean Tomo research and plans as well as third party industry reports.
Ocean Tomo professionals bring unique focus on ways IP assets support financial returns and enterprise value. Attention is given to maximizing revenue and minimizing capital costs by increasing the IP intelligence and awareness of capital providers. We are closely aligned with non-bank capital providers that recognize IP as a financeable source of value. Key metrics studied in this phase of an integrated IP monetization program include enterprise value, debt (cost and term structure), EBITDA (current and IP-linked potential), interest service and on-going cash requirements. Information considered spans public financial information and firm relationship intelligence supported by Ocean Tomo in-field analysts and its annually sponsored IP Investments & Markets conference.
Client Business Plan Review
Working with the Chief Intellectual Property Officer (CIPO), patent counsel and experienced client team members, our team considers company business plans, looking for both stated IP objectives as well as ways a strong IP monetization program can support overall business goals. Our work is informed by client experience preparing IP business plans as overlays to broader corporate strategies.
Preliminary Strategy Review
The first three building blocks above form the basis for a Preliminary Strategy Review identifying client specific ways that an IP monetization program can unlock and maximize value, while minimizing risk and any disruption to core business initiatives. Decades of experience suggests that the right strategy varies over time based on industry trends, client financial and market conditions and operating goals. Our assessment at this stage is cross-functional involving all of our practice areas. After presentation to the client, the preliminary strategy is refined before moving to the next stage.
Patent Taxonomy / Encumbrances / Competitive Landscape
Building on the preliminary strategy review, our team assesses the specific patent assets available. We consider patent life and term, patent family groupings, international coverage, competitive landscape, and other measures that inform our team of specific and potential value. Next, encumbrances are identified and mapped to all assets to understand any likely limits to value realization and to begin to assess an approach to identify and prioritize monetization options and partners. Ocean Tomo will often view monetization opportunities with best-of-breed tools to rate patent quality, determine relatedness of various assets and display the competitive patent landscape including identification of others who are investing in the technology at issue.
The results of our team’s assessment allow for a focused review of select patent assets by financial and technical experts. We integrate sector technological evolution with the latest in patent law, recent case rulings, and administrative and legislative changes to optimize portfolio opportunities. This ability is critical given the significant and ongoing changes in technology and patent law, suggesting changes in potential monetization value as well as desired execution technique. Our financial review is accompanied by a technical review of patent specifications and resulting claims.
Our collective analysis next feeds a second cross functional team effort led by our professionals to assimilate the information gathered and develop one or several strategic plans for monetization. This strategy is typically specific to each major patent family or technology group.
Often, clients ask that Ocean Tomo’s Valuation team assign price or value expectations to each major technology and/or the portfolio as a whole. Our work is informed by the detailed efforts which precede this analysis resulting in recommendations far more reliable than can be obtained by a simple high level review.
Our IP Monetization services are typically a precursor to execution of the recommended strategy by the Ocean Tomo Transactions Practice. Ocean Tomo Transactions provides private sale, private auction, and globally recognized public auction platforms to secure value from a client’s portfolio. For monetization strategies requiring capital, Ocean Tomo Investments can assist in identifying capital sources for debt, equity or joint venture investment.