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“To monetize intellectual property (IP) within a company effectively, collaboration between legal, business and finance groups must take place. Businesses should identify which assets are core to the business and which are not, and what can be licensed or sold to third parties. Then engage its finance group to evaluate the monetary value of those assets to ensure proper value is received, as well as reach out to legal for any NDAs or transactional work required to  monetize the assets,” suggests Susan McGahan, Assistant Vice President, Senior Legal Counsel, AT&T IP Law, AT&T.

McGahan is a speaker at the marcus evans IP Law Summit Fall 2017 in Hollywood, Florida, September 24-26.

What advice do you have for IP owners on cashing in on their assets? What don’t they do?

Many options are available if you have quality assets. One can contribute patents into a standards body or into patent pools, enter a licensing arrangement, consummate a sale, and assert the assets in a judicial proceeding. All of these options have the potential to generate revenue.

In my opinion, the quickest way to monetize is either selling or licensing IP assets. Utilization of patent brokers can assist in shopping assets or auctioning patents in lots. Sometimes buyers prefer to buy a patent portfolio in a specific technology area. If not a sale, then a cross-license for the entire portfolio on a non-exclusive basis.

Your non-core assets can be someone else’s treasure - either valuable to a start-up or someone breaking into the field.  

Companies should always ask for a grant back license so the seller has the freedom to operate without being sued. When licensing a patent, we must make sure that the patent is non-assignable or non-transferable and cannot be sub-licensed.

Who is in the best position to make that decision on what to commercialize and monetize? 

An IP business group can decide which assets can be potentially used for revenue after identifying the assets that are core to the business and determining the long-term strategy of the business The decision is not for legal.

What makes an IP strategy robust?

Collaboration within the company to get a handle on the entire IP portfolio, not just patents, but the technology/software, and whether source or object code is available for licensing. Also, trademarks, copyrights and domain names may also be prime for monetizing.

Then we must ensure the appropriate templates are ready to go when there is a sale or license, so it can be a smooth operation. It requires a lot of communication and due diligence, but it can be done. 

Any final comments?

Clients do not like surprises. They do not want to buy an asset and find out there is an ownership issue. You must be upfront. Avoid surprises and have a reputable name out there for doing business. Be forthright, diligent, and you should succeed.