Ballard Spahr's Unique Approach to Managing and Creating Value From Patent Portfolios

October 25, 2023

There are few leadership moves that can deliver up to a 400-percent return on investment. A deep dive into a company’s patents is such a move. Technology used by Ballard Spahr has saved its clients more than half a million dollars as well as identified new commercial partners simply by evaluating clients’ current patent portfolios.

Leaders of companies that work toward the discovery of life-saving treatments and cutting-edge technologies understand the value of IP, but the tangled patent landscape can seem opaque even to insiders. The question of how patent owners can properly value their assets and protect the breadth of their technology, but also offset risks of changing and developing technology, was answered by the creation of the PATENTSCAPE® platform, a joint effort between Ballard Spahr and Technium, an innovative technology company.

For more than 20 years, the PATENTSCAPE® platform has helped clients discover hidden sources of missing income, as well as identity new commercialization opportunities. The proprietary methods used by Ballard Spahr and Technium scour patent registrations and pinpoint data, relationships, and trends that would be almost impossible to see when working with patent documents on a case-by-case basis. It provides a comprehensive understanding of an existing patent portfolio and its competitive landscape. The technology can identify multiple areas that can lead to cost savings and commercial opportunities.

Focus on IP Strategy, Periodic Assessment, and Focused Resource Allocation

Patent portfolios, whether at large research universities, public companies, or up and coming start-ups, sometimes miss the inherent value in what is generally regarded as an entity’s most valuable asset.  Conducting a baseline analysis of the value of a portfolio or prioritizing the high, medium, and low value of these assets allows for a much more focused strategy about how best to use one’s IP. Such an analysis can lead to laser-focused targets for out-licensing, fundraising, whitespace mapping, in-licensing, or mergers and acquisitions. As a general rule of thumb, a third of a client’s portfolio has very low value, while another third has great value, and the client just doesn’t know which third is which. That is where PATENTSCAPE® comes in. In almost every project where PATENTSCAPE® has been utilized, Ballard has been able to prioritize and monetize with an emphasis on budget reduction and reallocation, and on generating revenue.

New Partners and Commercial Opportunities

Given the size of many clients’ patent portfolios and the constantly changing focus of various industries, many patents simply go unlicensed, uncommercialized, and sometimes forgotten. Ballard Spahr’s PATENTSCAPE® services have helped our clients identify existing patents and patent applications that can lead to new commercial opportunities for our clients. Opportunities including new partnerships, new licenses, and sometimes enforcement opportunities that were previously unknown or unrecognized by our clients.

Creeping Costs

Like maintenance of a garden that requires constant tending to avoid being overcome by weeds, a thorough cleanup of an organization’s patents is a necessary task.

“The longer you hold a patent, the more expensive it is to maintain,” notes Atlanta-based IP partner, Scott D. Marty, Ph.D. Patent renewal prices increase exponentially; a patent that was very profitable in its first years and originally registered for $1,200 would at the 11-year mark cost $7,700 to renew.

For numerous clients, Ballard’s PATENTSCAPE® platform has quickly identified older patents that, on balance, would be cheaper to let fall into the public domain than to continue to maintain. To date, PATENTSCAPE® has saved clients more than half a million dollars by identifying low-value patents to shed.

Ballard Spahr counts among its clients universities, government agencies, and major research centers, all of which were able to uncover major cost-cutting strategies as well as new sources of income from PATENTSCAPE® audits.

Rogue Employees/Inventors

An unsavory discovery for many clients via a PATENTSCAPE® audit is filing of patents by current/former employees that would have been developed while serving as employees of the client. Ballard guides organizations faced with this situation to the most advantageous course of action, whether it be a new licensing opportunity, assuming ownership of an improperly assigned patent, or litigation.

Although patent counsel can advise on issues relevant to IP, it is ultimately the business owner’s responsibility to set the wheels in motion for inquiries. In today’s environment, the consequences of failing to ask often are swift and severe.

“Responsible business persons should be asking, ‘Do I need and can I get IP protection for my company’s technology, what types of IP assets does my company have, and how can I use my IP assets?’” notes Marty.

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