Thursday 3 July 2014
Who are the “Good” “Trolls”? Or, How to Monetize Well?
This blog, in the past, has discussed the merits of so-called “patent trolls” or patent assertion entities (PAEs), here, here and here. For sure, some PAEs or "trolls" provide a helpful service for firms, universities and some inventors without the wherewithal to enforce their patents. And, defining exactly what is a “troll” may be a difficult task. But, are all PAEs and “trolls” the same? Are there good PAEs and “trolls”, and bad PAEs and “trolls”? How do you tell the difference? Joe Beyers and Wayne P. Sobon (both of Inventergy) recently published an article on Corporate Counsel titled, “Do’s and Don’ts of Corporate Patent Monetization.” The article helpfully explains why patent owners should beware the bad “trolls” or PAEs and should partner with the good “trolls” or PAEs. Why should they be concerned? The authors wisely state that protection of the brand is paramount. Association with a “bad” PAE or “troll” could reflect negatively upon the patent owner. The authors provide a list of criteria for choosing a “licensing partner”. Here are the “Don’ts”:
1. DON’T choose a licensor with a reputation for acquiring poor-quality patents and quickly suing.
2. DON’T select a licensor with a history of settling claims for a lot less than the cost of litigation (i.e., “nuisance fees”).
3. DON’T work with a licensor that sends widespread demand letters to multiple companies with little or no evidence that its patents are being infringed.
4. DON’T use a licensor that’s been the subject of any state actions or consent decrees, or has been forced to pay an opposing party’s attorneys’ fees.
5. DON’T partner with a licensor that operates behind hidden shell companies or otherwise has a reputation for abusive patent assertion behavior.
Here are the Do’s:
1. DO select a licensor that has made a public commitment to transparency and ethical business practices—and then speak with its licensees to confirm that this commitment is genuine in deed as well as word.
2. DO work with a licensor that seeks licenses only from appropriate companies (rather than startups or small retail businesses), and that comes to negotiations with substantive claim charts and other evidence of use.
3. DO choose a licensor that selects, owns and manages high-quality patent assets developed by global operating companies with reputations for innovation, like you.
4. DO use a licensor that takes active steps and commits material resources to ensure the quality of its patents, and vets them prior to licensing.
5. DO ensure that members of the licensor’s executive team have product or service company experience, and understand the needs and concerns of companies like yours regarding patent value creation.
This brings me to my next question. Well readers, who are the “good” “PAEs” or “trolls”? Please name them.
I suppose maybe there are no “trolls”--just naughty behavior.