Patent Portfolio Monitoring: Know How to Effectively Use Monitoring for IP Commercialization and Monetization – Webinar

Patent portfolio monitoring:

Patents are usually the intangible assets of a company, but their commercialization is an important contributor towards corporate success. Since innovations are of immense significance in the attainment of a competitive edge today, their successful commercialization & monetization is of considerable interest for stakeholders and investors.

Thus, effective commercialization & monetization strategies become integral for successful use of any patent portfolio for a company.

Patent portfolio monitoring helps in creating these effective strategies by:

  1. Identifying potential infringers for your patent portfolio
  2. Monitoring these infringing products to determine next step:
    -Whether to go the litigation route
    -The potential infringers can be potential licensees
    – Acquiring the products can also be an effective strategy
    – Monitoring potential for technology transfer opportunities (specifically for universities)
  3. Watching the portfolio of players in the market to understand their R&D direction and identify potential for out-licensing/transfer of rights.
  4. Assessing the marketing activities of players to identify potential buyers.
  5. Surveilling the market to understand how to fine-tune these strategies:
  • Market dynamics determine whether there is scope for commercialization of the technology
  • Monitoring various marketing activities of competitors and other players in the market helps understand the right method of commercialization (whether the market is suitable for acquisition or collaborations)
Fig. 1: Patent Portfolio Monitoring for IP Monetization and Commercialization

Key-points covered in this webinar

  1. Different strategies employed for commercialization of patent portfolios and how monitoring patent portfolio strengthens the strategies.
  2. How does monitoring the market in a particular domain help identify potential infringers.
  3. Moreover, how does monitoring patent portfolios and market help identify potential collaborators and/or licensees.
  4. Lastly, how tracking commercialized patents/deals in a domain help you devise your own strategies

Key-note Speaker

Harsha Agarwal, Assistant Manager LSC, Sagacious IP


Ram Tenneti, EVP, Sagacious IP

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Webinar Transcript

Ram Tennetti Speaking: Good morning, good afternoon, and good evening. Welcome everyone to the webinar. This is Ram Tennetti, Executive Vice President at Sagacious IP. I am signing in from India to welcome you all to our webinar today. Our today’s topic is “Know How to Effectively Use Monitoring for IP Commercialization and Monetization.” I will go on to introduce the topic and the esteemed speaker in our session today. However, I’m delighted to welcome all the participants from different parts of the world. Your participation is a wonderful encouragement for us. Thank you for joining us.

Fig. 2: Introduction of the Speaker

Moreover, we appreciate the effort and the attempt that we’re making to raise awareness and spread the knowledge. Sagacious owns this knowledge for several years of working with inventors, R&D organizations, IP departments, and IP law firms. Thus, we’re going to share it with you today, and in all our upcoming sessions. Our speaker of the session – is Harsha Aggarwal. Welcome to the webinar, Harsha.

Harsha Aggarwal Speaking: Thanks, Ram. Thanks for having me here. It’s a pleasure.

Ram Tennetti Speaking: Great, thank you. Before we start the presentation today, I’ll ask Harsha for her initial remarks on today’s topic. The topic of the webinar is – “Know How to Effectively Use Monitoring for IP Commercialization and Monetization.”


Harsha Aggarwal Speaking: Sure Ram, thanks. When we talk about patents as assets for a company, they’re generally considered intangible assets. Thus, their potential as revenue generators can be underestimated. However, in the current knowledge-based economy, companies realize that the monetization of these assets is an important contributor to corporate success.

Innovation is of immense significance for gaining a competitive edge. The successful commercialization of this innovation is of considerable interest to all stakeholders. Thus, it is important to understand how to effectively devise commercialization and monetization strategies. Moreover, Sagacious offers various solutions and services for devising these strategies. Thus, today we will talk about how we can effectively use monitoring patent portfolio or market monitoring to enhance these strategies.

Ram Tennetti Speaking: Thank you Harsha for setting the context of this webinar. I’m sure participants are very eager to take things forward.

With this, I invite all our listeners to keep sharing questions during or after the course of the session. Please use the GoToWebinar question box on the right side of the presentation window. Moreover, you all can also drop us an e-mail at [email protected]. We will share the required information, or if you have any specific queries.

That being said, let us now quickly get started with the main part of our presentation. Hence, let me quickly invite Harsha to take us through the slides. Over to you Harsha. Thank you.

Harsha Aggarwal Speaking: Thank you, Ram.

Monetization and Commercialization Strategies

Monetization and commercialization are integral to corporate success. When we talk about the strategies, there are two routes – licensing, and selling the patent portfolio. Selling the patent portfolio is very straightforward. You can sell individual patents to a potential buyer. Also, you can package the entire portfolio and sell it to any company.

Fig. 3: Patent Portfolio Monitoring Strengthens Monetization and Commercialization


The other route that is usually preferred and is more common, is licensing. There are two major types of licensing –out-licensing and technology-licensing. They go very well with the carrot and stick analogy.

Out-licensing is the one where you show your potential licensee a stick. You tell them that your product is infringing on my patent portfolio. Hence, licensing would be a good option for you.

The second is the carrot approach where you extend a helping hand or a hand for collaboration. You tell them to license our technology for the patent portfolio. Moreover, we also transfer our know-how and technical knowledge.

The third and more collaborative option is a joint venture cross-licensing. Here two companies license patents to each other. This is not a direct route to monetization. However, it can help in the commercialization of your product. Moreover, it helps in the overall development and marketing of the product.

Moreover, patent portfolio monitoring or market monitoring also strengthens these strategies. There are different kinds of monitoring that we can utilize as listed below.

  • Patent and prosecution monitoring.
  • Technology or megatrends analysis.
  • Competitive monitoring, or patent portfolio monitoring of a specific player or a competitor.
  • General market surveillance where we track different aspects or news articles in the market.

Identifying a Potential Licensee / Buyer Using Monitoring

The first step is to set up to the ground, performing initial infringement searches, and gather a lot of information. This is the stage where due diligence is performed. All the existing infringing products are identified. Hence, all the companies that have products infringing the patent portfolio are a potential licensee. That is one way to license or monetize the patent portfolio.

Fig. 4: Process Overview: Identifying potential licensees / Buyers using Monitoring

Further, you can gather a lot of other information in the initial stages. You get to know about the active players in the domain and their different patent portfolios. Moreover, it may also concern the technical literature that exists. Therefore, you can use all this information to set up a periodic monitoring. This is where you can identify buyers or licensees using different kinds of monitoring in the long run.

Since there are different types of monitoring methods, we can use their combinations or we can use them individually. Thus, one can classify it based on the technology and the size of the portfolio. You can even gather different insights from these monitoring methods for identifying the potential buyers or the licensees. For example, while monitoring we can identify new products in the market, and predict products of certain competitors.

Further, R&D interest or direction of any active player is another insight to look at. This can also help us identify the potential licensees in the long run.

Identifying Potential Licensees / Buyers Using Market Surveillance

The market surveillance method is the most frequently used method. The most common way for licensing is to go through the infringement method. You can identify infringers for a patent and that company with the infringing products is a direct target for licensing. This method not only identifies licensing in the first stage. We can identify new products that are infringing in the market and we get a direct target for licensing.

Fig. 5: Identifying Potential Licensees Using Market Surveillance

Moreover, we can also go with futuristic patents. They are the patents that do not have infringing products in the market at present. However, they can have a technology covered that may come up in the future. For example, smartphones or laptops have periodical updates coming up. Therefore, looking at a patent, we can predict that the feature may come up in the future. That forms a futuristic patent. Thus, we can identify new product with new feature or an old product with the update. Further, that becomes an infringing product and creates an opportunity for licensing.

Similarly, we can identify news and articles about companies and their areas of interest. A company may regularly publish articles, or remain in the news about a particular technology domain. That shows that they have the R&D segment dedicated to it. Or, they’re planning to dedicate an R&D segment to the technology. Hence, that company forms a potential target for technology licensing. Hence, if a company does not have a product, it would go for the technology transfer method. Further, it would transfer its technology and know-how to them.

Research Collaboration

Moreover, research collaboration of product announcements is the information used to identify companies with an upcoming product. Also, the company may have the technology or a product under development in the pipeline. Thus, these companies also need a technology that is complementary to their product. Further, it may help solve a problem in their product development as well. This forms an opportunity for technology licensing.

Additionally, a company may own a product which is complementary and possesses the synergistic ability as your product. This makes us go the cross-licensing way. Moreover, technical literature also gives us information about a company’s R&D direction. It provides us an idea about the kind of products this company may develop in future.

Case Study – 1         

This case study shows how this method enabled Sagacious in monetizing their portfolios related to smartphones. The client owned the patent portfolio related to smartphones and wanted to monetize the patent. They wanted to adopt the infringement route. Thus, we had to identify the infringement opportunities.

Fig. 6: Case Study – 1 (Patent Portfolio Monitoring Methods)

Our experts performed the portfolio study, analysed the patent, and screened through it. We have various in-house processes developed for them. These include T-Ranking and HML analysis. (Sagacious has a lot of webinars relating to them. Please refer to them in case you are  interested to know about that).

After the analysis, we identified the products for patents which have a high potential. Once we had those products, we performed an infringement analysis. We captured the Evidence of Use (EoU) and prepared claim charts. This helps in driving the point of infringement and the claim charts are used to strike a licensing deal.

This is the method one usually follows to go about an infringement licensing way. However, Sagacious takes one step ahead. It sets up a monitoring process for the futuristic patents. These patents capture the technology which is about to come up in the market. Moreover, there were some high and medium patents for which infringers were identified. EoU claims were prepared while carrying out the licensing process.

The other set of patents, categorized as futuristic patents, were setup for monitoring. In upcoming years, there were similar products launched in the market. Moreover, new products from companies, that did not exist a year back, also came up. Thus, we were able to identify the products infringing on these patents. Also, these patents were not actually the high potential patents.

Fig. 7: Case Study – 1: Conclusion (Patent Portfolio Monitoring Methods)

This multi-step procedure helped us execute the infringement analysis and licensing for various patents. These patents were considered high during an analysis.  Further, the analysis also included patents which did not show a lot of potential but became important overtime. Thus, Sagacious was able to help them identify these over one year of monitoring.

Identifying Potential Licensees / Buyers Using Patent Prosecution Monitoring

In this case, we identify different filings from a player or new filings from an existing player. One can also monitor prosecution activities such as granting of a patent. This information helps us in identifying new players, or start-ups that are entering the domain. This type of company or a start-up that we identify is helpful in identifying the potential licensee for technology transfer. Moreover, it also helps in identifying cross-licensees for collaborating options.

Since we are monitoring patents portfolios and not products here, we will not use the infringement route. Rather, we will identify the companies which have filings in the domain that shows the companies having products under development. Thus, we can choose between technology licensing or crosslicensing.

Fig. 8: Identifying Potential Licensing Using Patent Prosecution Monitoring

Similarly, office actions during the prosecution of a patent give us insights into the company R&D. Another use case for this prosecution activity is identifying or assessing acquisition targets. For example, a company wants to acquire some patent portfolio for commercialization. In such cases, prosecution activities help in understanding a good target for acquisition.

Identifying Potential Licensees / Buyers Using Competitive Monitoring

This process involves monitoring patent portfolios that were identified during the set-up stage of the analysis. During the infringements searches, we create a list of players that are active in the domain. Sagacious sets up these processes of patent portfolio monitoring for these players. Over a period of time, various aspects of their portfolio are monitored. These include the patents that they file and also the product portfolio of these players.

How this Information Can Be Used?

We identify an active player for the patent domain which has a product in the pipeline and is going through clinical stages. It is difficult to establish infringement for that product at this stage. However, over the period of time, we see the product going successfully through various stages of clinical trials. This enhances the chances of the product coming in the market. Thus, this makes the patent more potential for monetizing.

Fig. 9: Identifying Potential Licensees Using Competitive Monitoring

We may also find a product from a company at a prototype stage. However, over the span of monitoring it gets up-scaled. It becomes a direct target for out-licensing through infringement. Here, in prosecution monitoring we identify whether a patent has been abandoned or withdrawn. Moreover, we can also see some insights about problems that a company is facing in their R&D.

For example, if a patent in a company gets rejected or abandoned, it shows that there might be a roadblock in their R&D. You can use that identify potential opportunities for a technology transfer. We can approach this company and maybe help it go through this process. Further, we may also give them a supplementary or platform technology transfer, and transfer knowledge to you. This is a way to identify the potential licensees for your patent portfolio.

Therefore, we discussed different methods of monitoring to identify licensees. We also understood how to approach these licenses. Moreover, we also toppled between whether to choose out-licensing, and technology transfer to identify the potential licensees. Thus, we can look at another case study that depicts a technology transfer for universities.

Identifying Potential Licensees / Buyers Using Technology or Megatrends Analysis

Universities generate significant research having immense commercialization potential. They execute this through the innovation cycle they have. The end goal of this research usually is to monetize these patents. This is because the universities are not directly involved in the commercialization of a technology. This innovation cycle and different monitoring processes help the university at different stages of commercialization.

patent-portfolio-monitoring- university-innovation-cycle
Fig. 10: Patent Portfolio Monitoring: University Innovation Cycle

For example, you can use technical monitoring or mega trend analysis to identify potential for R&D in the domain. Similarly, you can use the method of ‘patent portfolio monitoring’ to identify research collaboration. Thus, you can use the three monitoring processes to identify licensees of these technologies.

Case Study – 2

Sagacious helped a University monetize their patent portfolio. This University approached us with a patent portfolio relating to a mental health diagnostic technology. They were first interested in out-licensing their technology.

Fig. 11: Technology Monitoring and Mega trends Analysis – Case Study-2

The first stage of the setup was to analyse the technology domain. We had to understand the study and perform the basic market research to check the potential of the technology. We also conducted potential infringements study and identified various other competitive technologies in the market. Hence, based on our infringement study, we identified that there was no existing product in the market. This was because the technology was very new to the market. Thus, we had to go through the technology transfer route for this patent. Thus, we identified the companies that might need this technology for their product development.

During the first stage, Sagacious identified both small and large companies based on their areas of interest. We identified the ones which could be a potential buyer for this technology. Further, we also set up market surveillance. We made sure that these companies were also monitored. We monitored the news articles and seminars of public events of these companies. Moreover, the market in general was also monitored to see monitor the new companies entering this domain.


After the monitoring period, the university finalized top three potential licensees. This happened on the basis of their areas of interest and the stage of the product. Some company was at the stage of research collaborations.

Fig. 12: Technology Monitoring and Mega Trends Analysis – Case Study-2: Conclusion

Thus, they were considered as a potential licensee. Some were actively acquiring patent portfolios in the domain. Some were licensing with different technologies for developing their product. Thus, on the basis of different news articles and the product stage, our client finalized three potential licensees.  Moreover, the process of periodic monitoring catalysed this process over the span of one year.

Selling Out the Patent Portfolio

Selling out the entire patent portfolio also helps in monetizing the patent portfolio. Since the question is about selling an entire patent portfolio, due diligence forms a major component of this process. This happens before reaching the stage of identifying the buyers for the portfolio.

patent-portfolio-monetization- selling-the-patent-portfolio
Fig. 13: Patent Portfolio Monetization: Selling the Patent Portfolio

We first identify if the portfolio has an infringement potential or not. We also make sure that the patent we are selling will remain valid over a long period of time. Further, we also make sure that there is very less chance of opposition for these patents. The third step is to identify the monetary value of the portfolio. This is where patent valuation comes in.

This is because after having an idea about the monetary value for the portfolio, we may begin identifying the buyers. Monitoring can help at various stages of these processes. Due diligence and market surveillance aids in identifying buyers and different patent valuation strategies. Moreover, it also helps us identify different deals in the domain that have happened over the years. Also, it helps us facilitate the sale.

The Difference between Selling and Licensing Approach

The selling approach is as similar to the licensing approach we follow. The only difference is that we have to identify a buyer and not the licensee. Thus, the overall approach and the use of the information obtained from the monitoring differ.

  • Patent domain monitoring: we can monitor the patent domain to see new filings from a player or change in status of filing. This can give us insights about the company with the concerned domain.
  • Patent portfolio monitoring: similarly, patent portfolio monitoring of the active players tells us about the product stages and different up-scaling of the product. Moreover, it also notifies us about the upcoming products in the market. This can also be a potential buyer.
  • Marketing analysis: you may execute market analysis for various aspects. These include products, technical literature, and other news and articles and market activities. Different information derived from market surveillance gives us information about buyers in different ways.

Reasons for a Company to Become a Potential Buyer

A company can be a potential buyer for different reasons. A company with mere interest in the domain can be a potential buyer. Moreover, the one on the verge of launching a product can also become a potential buyer. The difference here lies to identify how our patent portfolio helps their product launch.

Fig. 14: Identifying Buyers for Patent Portfolio Monetization

Sagacious helps you identify where your patent portfolio gets a best fit for the buyer. Patent portfolio monitoring is a very efficient way to do that.

Case Study – 3

This case study depicts how Sagacious helped a bio-pharmaceutical company monetize their entire patent portfolio. The patent portfolio under study was a protein polymer technology. The client was specifically interested in understanding the value of their portfolio. Finally, he wanted to identify the potential buyers for this technology.

Fig. 15: Selling the Patent Portfolio – Case Study-3

It was very similar to a licensing approach. The initial stage consisted of information gathering. This helps us in understanding different aspects of the portfolio. However, since this is a monetization study, the initial stages are also divided into various processes. These processes involve a technology study along with a potential infringement study.

Moreover, we conduct a performer valuation study to assign a monetary value to the patent portfolio. You must also perform validity searches to ensure zero opposition against the portfolio under study. Further, we identify the buyers which are active in the domain. We can identify infringement as well. However, it is a very direct approach for selling your portfolio to the company that owns an infringing product.

Or else, we can identify the players who have upcoming products in the market. Moreover, potential buyers may also include the companies in the peripheral domain. This is because they show interest in the particular patent technology.


There is a patent portfolio related to a protein polymer technology. Thus, any company that worked in the therapeutic area under polymer-aided drug delivery is a potential buyer. We identified this during our market surveillance. We saw that a company was recently involved in mergers related to polymer technology. Thus, that company was interested in buying similar technologies. It wanted to enhance their overall patent portfolio as well.

Fig. 16: Selling the Patent Portfolio – Case Study-3: Conclusion

Similarly, we identified another company during the market surveillance.  It had a very recent clinical trial failure of a pegylated therapeutic. This gave us a short window of opportunity. We knew that the company had a failure product. Thus, they would want some technology that could help them take their product through these clinical trial series. Hence, that company became a potential buyer for this technology.

Therefore, you will find it easier to understand the overall dynamic of a company during the period of due diligence. You get an idea whether the company is a potential buyer or not.

Monitoring Help us Understand the Process of Making a Strategy for Monetization

A company or an innovator may not have any idea about the strategies for executing the portfolio monetization. Hence, insights from market surveillance are very important at that time. It is because it shows us the opportunities that exist in the market. Moreover, there are certain technology domains in the markets where collaborations are very common. For example, bio-pharmaceutical is a domain where collaborations are very common. However, acquisitions can also happen.

Fig. 17: Understanding Monetization Strategies Using Monitoring Methods

Similarly, it helps to identify the way for your monetization. You can understand different markets along with the opportunities available in different geographies. Moreover, you get an understanding about your customer segments. Also, you can explore if there are existing products in the market and what is the portfolio like. You may also discover the life span of the product.

Moreover, you can carry out the surveillance of the stages of development of the products in the pipeline. All this information helps you understand about how to monetize your patent. Further, it helps you identify those potential buyers and licensees in further stages.

Examples: How To Use Market Surveillance To Fine-tune Strategies

Fig. 18: Examples: How to Use Market Surveillance to Fine-Tune Strategies

For example, one may look upon the deals that have happened in the past to know the monetary value of a portfolio. You may explore whether exclusive or non-exclusive licensing agreements have happened. Or, you get an idea of whether there is a trend of a particular type of licensing agreement in that domain. Thus, you can gather all this information, royalty, and licensing rates. Moreover, you can use this to fine tune the strategies of your patent valuation.

You can use these insights to decide between going for infringement litigation or for technology transfer while devising the strategies. In infringement, you can use the existing prosecution to devise an effective strategy for your core or non-core business patents. Moreover, you can take decisions for selling purposes on the basis of the information gathered from market surveillance or patent portfolio monitoring. These decisions include deciding for a potential market and a better idea to sell patents or the entire portfolio.

Case Study – 4

This is a case about a Fortune 500 company. They came to Sagacious with a portfolio. They did not have any fixed direction of how they wanted to monetize the portfolio. Thus, they approached Sagacious to prepare a strategy for them. We offered them three different options. We analysed the patent portfolio and divided the portfolio into core-business patents, and non-core business patents.

Fig. 19: Effective Monetization Strategies and Support – Case Study-4

Core-Business Patents                          

Core-business patents are the patents which are directly related to your big business segment. They protect the products of the company. Thus, one way to start is to identify the infringement related to core-business. Since these are core-business patents, the potential infringements are their direct competitors. Thus, out-licensing or technology transfer, you can use both to monetize this patent section of your portfolio.

Non-Core Business Patents

The other is the non-core business patents. These patents revolve around the peripheral technologies that may not directly impact your business, but exist in the domain. Sometime, these are a result of previous patent portfolio acquisition that a company acquired. Thus, these patents are only present in the portfolio and do not generate any revenue.


Hence, a very effective way to generate revenue is to identify infringers for these patents. Further, we can license out these patents to the potential companies.


Similarly, we can also use these patents to cross-license their patents to other companies. These companies must have complementary technologies. Thus, this will aid in developing a new product line for additional revenue.

Track existing prosecution

We can propose existing prosecution to these clients. We can track existing prosecution of patents in that portfolio. A patent portfolio will already have some on-going prosecution. Or, it may have some prosecution in the past with successful infringement litigation. Thus, on the basis of the status of the previous litigation, we can identify new products for the same patents. This will give us new opportunities for licensing.

Moreover, in case of a failed or unsuccessful litigation in the past, you can use it to identify the weaknesses. However, you need to make sure that you identify high potential patents. These patents must not have the same weaknesses as the unsuccessful litigations had in the past. Further, you select these patents and identify the infringement for the licensing route.


Thus, everything depends on the concerned aspects and the information that we derive from a patent portfolio. Sagacious suggests you various ways to license out your patents or sell them out.

Hence, patent portfolio monitoring and market monitoring is very important at various aspects of the IP life cycle. Finally, it is about identifying where these monitoring methods will be most efficient for your overall innovation monetization.

Importance of Patent / Market Monitoring in Commercialization & Monetization

Not only in commercialization or monetization, but patent portfolio monitoring and market monitoring can help your corporate strategy at various stages. Different monitoring methods can help you mitigate risks related to your acquisitions, mergers, and licensing. It helps you identify the direction to take for your R&D. It aids in strategizing your R&D via identifying whitespaces.

Fig. 20: Importance of Monitoring in IP Monetization and Commercialization

Similarly, commercialization approaches are about identifying the licensees or buyers and the success potential these portfolios have. Moreover, patent portfolio monitoring helps in tracking your own IP or track your competitor’s IP. This helps in understanding the dynamics of your IP and how to make your portfolio better.

Therefore, the final way is to build your own IP. Every company has innovation happening inside it. Thus, it is very important to build IP over that. Monitoring can also help you understand how to fine-tune your IP strategies and expand your patent portfolio.

sources of gathering information
Fig. 21: Sources of Gathering Information

These are the sources that we usually use to gather the information, and that is all about the topic.

Over to you, Ram, if we have any questions.

Ram Tennetti Speaking: Sure, that was very insightful. Thank you for the lovely presentation. I’m sure our audience must have enjoyed the breath-taking insights that you have provided. Let me quickly take on the questions that we have. I see a couple of good questions.

Questions / Answers

How would one decide the monetization strategies between licensing and buying? What are the different considerations for devising such strategies?’

Harsha Aggarwal Speaking: Different factors can affect these strategies. One is the technology stage – the technology of the patent portfolio. For example, a technology of the portfolio is somehow exhausted. Moreover, it is already present in the market for 5 or 6 years. In this case, selling out that patent portfolio is a better option. This is an exhaustive technology. Thus, selling out the entire portfolio as a package is more efficient than identifying particular buyers for a single patent.

Similarly, while identifying whether to choose licensing or buyer, we must see the kind of companies existing in the domain. Moreover, we must look over the kind of potential buyers or licensees that exist. This is because big companies with higher revenue or large companies have the potential to buy an entire portfolio.

However, in terms of licensing, even a small or medium enterprise is able to license a single patent. You may also consider it as a deciding factor while choosing between licensing and buying. That is what comes to my mind right now. We can discuss more if somebody has these queries in detail, depending on the case.

How does Prosecution Monitoring Help in Commercialization?

Ram Tennetti Speaking: Not a problem, it definitely does help. However, you mentioned somewhere that prosecution monitoring helps in devising commercialization strategy. Could you kindly elaborate a bit more on how prosecution monitoring helps in commercialization?

Harsha Aggarwal Speaking: Prosecution monitoring is related to monitoring the different office actions that happen for a patent under study. One way comes up when a company is looking to acquire a patent portfolio. In that case, it becomes important to assess whether this acquisition target is viable or not. Moreover, it is important to asses whether it will be fruitful in the future or not.

Thus, it is about understanding the scope of the patent and knowing if it is getting multiple rejections. This is because sometimes, multiple rejections limit the scope of the patent. Thus, these integral details can help us understand the future potential of a patent. Hence, during acquisition it becomes very helpful in assessing the patent portfolio.

The second way goes around a company that wants to acquire somebody’s portfolio, and execute patent portfolio monitoring that target portfolio.

Another way is to monitor our own patent portfolio. That helps companies in keeping a track of the kind of prosecutions or office actions their patents are inviting. This can further help them in devising the strategies. It will not directly help in monetization, but it will help in devising the best strategy for that portfolio.

Scope for Monetization of a Patent Portfolio

Ram Tennetti Speaking: I have an interesting question. Let me call that to be the last one. We’re running out of time. I see someone says – they have a patent portfolio that has few applications right now. Moreover, those are the ones that have not been granted yet. Is there a scope for monetization of this kind of portfolio at this particular stage? If yes, what kind of strategies would you suggest?

Harsha Aggarwal Speaking: We deal with various portfolios where start-ups with very upcoming technologies or technologies in the nascent stages have a few patents. Moreover, the process of grant takes a couple of years at that stage in their life cycle. They might not have been granted yet. However, if the technology is strong, there is a high potential for the commercialization or monetization of this portfolio.

Thus, the best way is the licensing way. This is because it is a start-up and the technology is in its nascent stages. Hence, there is a good potential to build up on the same technology for the startup. Therefore, you must license it out through technology licensing. You will not only give up licensee rights or the patents, but also transport the technical know-how. That is a good way to monetize these patents.

Additionally, prosecution monitoring is also really helpful here. This is because these patents are not granted. Thus, they will be monitored to see the kind of rejections or office actions they are gathering. Based on that, you can devise an effective strategy for licensing these out.

Remarks Given by the Anchor

Ram Tennetti Speaking: Great, that helped. Thank you, Harsha. This was really a great session. I’m sure listeners must have taken great takeaways from this session. They should be able to use it in their business, as and when applicable.

There are a couple of questions that we could not take up because we’re already running over time. However, we shall hope to cover them with our subject and right up. All the people who are listening please feel free to drop us any queries. You may drop us any suggestions or comments on [email protected].

I want to extend a big thank you to all our listeners, who have helped us start things on time. Although we’re a bit stretched, I think we have finished quite well. We really appreciate you taking part and for your time and consideration. Thank you very much Harsha, for sharing your insight. It was a pleasure having you on the call.

Harsha Aggarwal Speaking: Same here Ram. It was a pleasure.

Ram Tennetti Speaking: Everyone, please join us in our next webinar. Thank you for joining this time. Have a great day ahead. Thank you.

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