Those tasked with managing patent assets face a myriad of challenges when handling a sizable portfolio. The needs of keeping a competitively-sized portfolio often run counter to the desires to keep IP budgets under tight management.  Further, gradually accruing patents also means rising annual maintenance fees.  These costs can be offset by licensing wins, strategic defensive patent utilization and even enforcement, but even identifying opportunities for such monetization in a large portfolio can be cost-prohibitive.

Brooks Kushman’s analytics team leverages powerful analytics technology  to assist clients in evaluating portfolios, minimizing costs, and obtaining strategic defensive information. By using newly available analytics data that identifies when your patents and applications are used as prior art, we are able to efficiently identify potential licensing targets.  Our skilled attorneys can then review the rejected applications and any corresponding products to determine if a license offer is recommended.  At the same time, we can use the rejection data as the starting point for considering targeted continuation filings.  We offer start-to-finish licensing services, beginning with target identification, through license drafting, to enforcement and future audits.

Our team also uses the available analytics and rejection information to assist with strategic planning in conjunction with our clients. Having access to a wealth of portfolio data and competitive information, our attorneys are able to compile useful reports to make informed decisions on the management of their patent portfolios. This information is also useful in making informed and cost-effective decisions on maintenance and renewals fees.

Our team has extensive experience working with Fortune 500 Corporations, universities, and small to medium sized companies on using this information as a strategic advantage to make more informed decisions while managing patent portfolios.

  • Analytics and AI Monthly: Vol. II – Maintenance Fee Management
    Wednesday, July 11, 2018

    This month we will tackle a topic near and dear to the hearts of anyone who manages a reasonable sized portfolio – Maintenance Fee Management.  Every issued patent carries ongoing maintenance fees, which are currently $1,600, $3,600 and $7,400, at 3.5, 7.5 and 11.5 years, respectively.  That means that every...

  • Measures to Copy Competitor’s Patent Claims
    Thursday, May 10, 2018

    Introduction: Welcome to the inaugural issue of Brooks Kushman Analytics and AI Monthly.  In this planned ongoing publication, I will be discussing known and newly discovered opportunities to apply emerging technological tools to current intellectual property paradigms.  In an open-ended series of articles, I will provide insight on how to build...

      • Strategies for Managing a Global Patent Portfolio
        Thursday, October 11, 2018

        Managing global patent portfolios is no small feat. Especially since certain emerging markets are becoming increasingly important and will play a vital role in your company’s IP strategy. In-house counsel, in cooperation with outside counsel, need to work together to accomplish your company’s business strategy and IP goals. During this webcast,...

      • Strategic Prosecution: Mining Your Competitor's Portfolio for Your Strategic Benefit
        Thursday, May 10, 2018

        Over the last decade, the United States Patent and Trademark Office has increasingly given the public access to its terabytes of raw data. As this information has increasingly been converted into usable, searchable formats, a great deal of actionable information has been discovered, some presenting extraordinary strategic benefits. Once upon a...

      • Preparing and Prosecuting a Patent That Holds Up to Challenge
        Thursday, January 25, 2018

        Mistakes made during preparation and prosecution of the patent are among the main reasons an otherwise commercially successful technology can produce a portfolio of low value, or even worthless patents. Obtaining a patent that will hold up to challenge when the patent owner seeks to use that patent, whether through litigation...

      • IP Analytics – Powerful Strategies for Portfolio Management
        Wednesday, December 06, 2017

        In-house counsel are faced with a myriad of challenges when it comes to management of a large intellectual property (IP) portfolio. Studying analytics to take a deep-dive into their portfolio often takes a backseat to other responsibilities. And until recently, many data-supported perspectives were not even readily available. Now, however,...