Patent Portfolio Management
We provide strategic counseling to businesses on the development and commercialization of their patent portfolios. This includes exploring options for licensing, sale or litigation—and sometimes a combination of all three. We also help clients expand portfolios through acquisitions, oversee high-value patent prosecution, develop licensing campaigns and enforce license agreements. Our success stems from a synergistic combination of technical, business and litigation expertise.
Irell’s team of more than 20 registered patent lawyers has extensive experience obtaining patents across a broad range of technologies, from life sciences to computer sciences. Many of us have professional experience working in private industry as well as advanced technical degrees. Our group also includes the former undersecretary of commerce for intellectual property and director of the U.S. Patent and Trademark Office (USPTO), former patent examiners with the USPTO and a former chief administrative patent judge of the Patent Trial and Appeal Board (PTAB). With a focus on quality over quantity, we are a go-to firm for industry leaders seeking patents on high-value technologies foundational to their businesses.
We also play a key role in counseling clients on the ongoing management of their patent portfolios. We partner closely with clients to develop a deep understanding of their businesses, allowing us to craft and employ assets in a manner best suited to their commercial objectives. Our lawyers regularly advise on where clients should be applying for new patents, both for defensive and offensive purposes. We design and execute licensing programs that allow our clients to obtain fair value from their inventions. We additionally counsel with respect to valuations, sales and acquisitions.
Our guidance in this area draws heavily upon our patent litigation acumen. Irell’s transactional lawyers and litigators work together to help clients build portfolios and licensing models well-suited for litigation, creating risk profiles that enable many of our clients to receive appropriate compensation for their inventions without the need for contested proceedings.
As an example, we recently began advising a portfolio owner on enforcement options in the U.S., including the ITC, and internationally and ended up handling a nine-figure sale transaction.
In another recent matter, we conducted due diligence on a portfolio of patents that was available for sale; handled the acquisition of the portfolio at a purchase price exceeding $4 billion; and then designed a licensing program and successfully represented the client in patent litigation across the country on the acquired patents.
- RealClear Policy, 03.2022