Overview
Steptoe partner Kate Tellez authored an article that appeared in Law360, "Adapting To A Plaintiff-Side Mindset For Patent Monetization." The article discusses the growing trend of patent monetization and the shift toward a plaintiff-side mindset. Recent changes at the US Patent and Trademark Office (USPTO), including reduced trial institution rates and increased discretionary denials, have lowered invalidity risks for patent owners. These developments, combined with corporate interest in monetizing patents rather than using them defensively, make monetization strategies more appealing. High-profile examples include Intel and Blackberry selling large patent portfolios, signaling a broader industry trend. Survey results support increased interest in patent monetization amongst in-house counsel.
For companies considering monetization, key factors include choosing the right strategy – such as outright sales, licensing, or litigation – while weighing timing, risk appetite, and reputational concerns. Additional considerations involve privilege and work product risks due to complex stakeholder involvement, as well as economic analysis to justify purchase prices and assess litigation viability. Ultimately, successful monetization requires balancing infringement, validity, and damages issues with financial and strategic goals.
