One of our regular clients recently reached out to us with a project looking to initiate a licensing program where licensees cannot counter-assert their portfolio against it. The article discusses how we went about the program and helped client identify adjacent markets other than the core markets intended to be covered by the client’s patent portfolio.

A technology company based in San Jose, California, specialising in providing servers, cloud services, networking technologies, and hyper-converged infrastructure, has a well-diversified portfolio ranging from hybrid IT to financial services. It is also actively involved in IP licensing programs where it provides licenses for its core technologies to major players such as Hitachi, Intel, Lenovo, etc.

The Challenges

  • In order to launch the licensing program from scratch, the tech company required help to identify 8 – 10 relevant adjacent markets in the non-core domain.
  • It was also looking for a list of relevant companies as well as a number of relevant patents in each identified market.
  • To initiate the program, high-quality charts on the relevant companies for all the potential markets were highly needed as well.

The Solutions

Given these challenges, Sagacious IP delivered agile and flexible solutions. Based on years of research experience with several global companies, Sagacious IP knows that the most important aspect of driving a licensing deal is technical research. So, we shared multi-pronged approach to identify 10 potential markets and relevant patents for each market and formed a team internally to quickly screen through the identified portfolio in each market and give quality indicators on the extent of the claims, ease of evidence identification, applicability to products of potential licensees.

The most crucial step was to identify potentially viable adjacent market opportunities. For the ideal framework, a detailed research was carried out to ascertain how well each potential market stacks up against each criterion.

Based on the first-pass analysis of each portfolio, we walked them through the identified licensing opportunities in each non-core domain. Sagacious IP followed a structured approach and used different skills at different stages of the project to help the client kickstart a licensing program in adjacent markets.

And, only after the client’s approval, we generated quality claim charts for the promising assets on multiple companies. Since claim charts work as a solid evidence to support the infringement contention prior to any contact.

The Impact

As you might have guessed, the tech company was thrilled to find that it could finally launch a licensing program in which licensees could not counter-assert their portfolio against it. One of the major highlights of the solutions offered to the client was our quick analysis model to identify the potential market, which was hugely appreciated by them.

Our assistance and solutions helped the client to nudge outside its comfort zones, make a move, and consider how similar the potential target-market segments are to their current goal.

Many companies prefer to outsource preparation which is research-intensive, while managing the assertion phase within their existing licensing team. Outsourcing from Sagacious IP gives them an independent review of their patent portfolios.

Way Forward

Sagacious IP understands that understanding the client’s pain points is the key to mutual growth. The better we understand, the better we will be able to serve their needs.

We believe, it is important to understand the value of your patents and explore the opportunities for monetization through IP licensing. We help our clients develop the best patent licensing in and out strategies through an in-depth analysis of their portfolio and through careful research of specific industries and products.

For most companies today, the ability to identify, analyze and pick a potential market to fuel growth is important. Yet it can be difficult due to resource demands, pre-existing biases, and lack of expertise in this field. If you’ve started or are considering starting a project in this field, please contact us to explore how we can help you expand to other markets effectively. Let’s connect.

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