Strategic Intellectual Property Counseling

Transforming ideas into valuable IP assets in order to gain a competitive advantage is a hallmark of our practice.

Our attorneys manage large, medium, and small patent portfolios and recognize the need to provide prompt, high quality strategic advice to meet our clients’ needs.  Additionally, we help start-up and emerging technology companies leverage their intellectual assets to achieve their business goals.  Notably, many of our team members have start-up experience, and understand the demands facing start-up and emerging technology companies.

We have assembled a team that has the technical skills to understand your technology and how your innovations can provide you with competitive advantages.  Our diverse technical backgrounds, graduate engineering degrees, former industry, and USPTO experience allow us to quickly grasp, describe, and claim the inventions in your patent applications.  Our lower overhead allows us to offer flat fees and keep our billing rates significantly lower than those of “big-law” firms, which allows us to take the time to understand the technology behind each invention and to provide cost effective answers, strategies, and patent applications.

Furthering your business is our priority.  Your business plan becomes the centerpiece of our IP counseling and strategic advice.  Let us put our knowledge and experience to work for you.

IP Due Diligence

Marbury attorneys have experience in conducting both buyer and seller side IP due diligence, including hands-on experience as both buyers and sellers of businesses and IP portfolios.  We have conducted IP due diligence on start-up and emerging technology companies for venture capital and angel investor clients, reviewed university IP for spin-out start-up companies, worked with start-up and emerging technology company clients in positioning them and providing information for venture capital investment, reviewed the IP to be licensed, and provided IP due diligence as part of a joint venture, merger or acquisition.

Marbury’s approach to IP due diligence goes beyond merely filling out checklists and collecting listings of target companies’ IP.  We focus on determining the commercial value of the IP portfolio by reviewing the target’s patents, trademarks, copyrights and trade secrets, and determining their potential contribution to competitive advantage in the market.  We determine the validity of the target patents and review the landscape of third party patents to determine if they would block the commercialization of the target’s products.  This allows us to suggest possible design-around options for the target product to avoid infringement of third party patents prior to the conclusion of the deal.  We also review IP agreements to determine any uncovered problems with ownership of the IP and unexpected royalty obligations.

The IP due diligence process is different for every transaction.  We tailor the due diligence process to the size and scope of each transaction. During due diligence, we focus on the value of the target’s IP portfolio, potential patent infringement road blocks to the target’s product and any problems associated with IP agreements.

We include former USPTO examiners in the due diligence process.  Our former examiners can quickly spot problems that occurred during prosecution of the target company’s patents at the USPTO and can suggest alternative prosecution and claim strategies for pending patent applications that will increase the patent’s value.

IP Audits

Marbury attorneys also have experience in conducting IP audits for our clients.  IP audits are similar to IP due diligence, except that they are performed to enhance the value of the client’s IP and to proactively remedy any deficiencies in the existing patent portfolio.  IP audits are normally performed internally prior to a financing round, IP licensing effort, or initiating a merger or acquisition. Thus, an IP audit may be conducted as “reverse due diligence” to ensure that a company’s IP and other intangible asset values are optimized and presented in a way that is easily understandable and attractive to potential partners and investors.

Our attorneys are also skilled at conducting “patent harvesting” sessions with our clients’ technical personnel.  Our experience indicates that many of our small to mid-sized clients were leaving valuable IP “on the table” because their technical staff did not have an appreciation for what might be patentable.  Our clients have found our patent harvesting sessions to be quite fruitful as they often uncover valuable but forgotten IP assets.

As an example, Marbury helped a buyer of a company identify weaknesses in the intellectual property of the seller resulting in a lower purchase price for the buyer and a plan to strengthen the IP portfolio of the seller’s company post-sale.  We have also advised companies on how best to strengthen their IP portfolio in preparation for a sale, resulting in a higher price to the founders.

Patent and Trademark Opinions

Marbury attorneys have significant experience in rendering opinions of counsel to provide guidance to clients with respect to patent and trademark management. Opinions may be used offensively in a pre-litigation context, for example in analyzing whether a third party may be infringing the claims of our client’s patent.  Non-infringement and invalidity opinions may also be used defensively to provide a shield against a claim of willful infringement if a client is accused in court of infringing a third party's patent.

Our opinions are always strictly supported by appropriate legal precedent and the issues examined are tailored to the business interest of the clients and their specific budgets.  We have experience in rendering opinions ranging from formal opinions of counsel to less formal memos, oral opinions, and “Red Flag” analyses, to provide advice to assist our clients in making important business decisions.

To render competent opinions which will withstand the attack in litigation, we keep abreast of the current case law and rely on our deep understanding of patent law from our complementary patent prosecution and litigation practices.

Patent Landscape and Freedom to Operate Analysis

Marbury attorneys have significant experience in performing patent landscape and freedom to operate analyses.  We work with professional search firms to uncover third party patents that may block a client’s freedom to make, use, and sell their products.  We then analyze the patents and provide a summary of the freedom to operate, the patent landscape, or a product design around depending on client’s needs.  Marbury has performed freedom to operate analysis in various technical areas, including electronics, software, nanotechnology, cleantech, and mechanical devices.

Set-up and Management of IP Program and Strategy For Start-ups

Marbury attorneys have set up and managed IP programs and strategies for a number of start-up companies.  The IP strategy and management program is tailored to each client’s business plan.  Thus, the IP strategy for a start-up which plans to license its IP is different from a start-up that plans to manufacture its products.  Likewise, the IP strategy for a cleantech or nanotechnology start-up often differs from that of a biotech start-up.

We also set up in-house IP programs, including the invention disclosure process, patent review board procedures, invention ranking, trade secret versus patent assessments for inventions, fiscal IP budgeting, and foreign filing budgeting and planning.

Patent Portfolio Management

Our attorneys manage patent portfolios of all sizes, with strategies tied directly to the client’s business plan.  Thus, for some clients the portfolio is managed defensively to cover the client’s product line to provide the client the exclusive right to make, use, and sell their products.  For other clients, the portfolio is managed offensively to maximize licensing revenue or to secure cross-licenses from third parties.  Some clients requires a mix of offensive and defensive patent strategies.

Valuation of IP Assets

The importance of intellectual property assets in the overall worth of a business is increasingly being recognized.  However, many businesses, investors, and lenders have a difficult time placing a value upon or otherwise assessing this type of property.  The Marbury Law Group is able to assist clients, investors, and banking institutions in determining the worth of assets of this nature, thereby limiting uncertainty in related transactions.
 
Monetization of IP Assets

The Marbury Law Group has helped several clients turn their IP assets into cash or cash flow through sales and licensing.  For those clients looking to license their technologies, we can help identify prospective licensees, initiate or facilitate contacting targeted licensees, and negotiating the license agreement. In some cases, licensing IP assets requires the threat of or initiation of litigation, with which we are very experienced.  For clients looking to sell some or all of their IP portfolio, we can identify the likely bidders, prepare the necessary offering memoranda, offer the portfolio to prospective buyers and attempt to initiate a bidding war, negotiate the deal, negotiate the assignment documents, and manage the exchange of IP assets and consideration.  Depending upon each client’s preferences, budget and portfolio, we have monetized IP portfolios ourselves as well as worked with agents, brokers, and auction houses.