Case Study 5

Licensing Strategy Formulation and Implementation

Patent maintenance decision made easy

The Situation
PatentHolder Inc., a large Canadian corporation, held a large patent portfolio and was paying out significant amounts for patent maintenance fees. Decisions as to whether to pay the fees or abandon the patents were routinely necessary. If the technology was clearly out-dated and obsolete, it was easy to decide to abandon the patent and cease paying the maintenance fee. If the technology provided PatentHolder with a competitive advantage or had been licensed out, it was easy to decide to continue to submit the patent maintenance fees. However, in some cases, PatentHolder was not utilizing the patented technology themselves, but believed that the technology was still state-of-the-art and that there may be a potential to license others.

The Challenge
In order effectively make patent a maintenance decision for a selected PatentHolder patent, PatentHolder wished to assess the potential for licensing the patent.

The Solution
To assist PatentHolder, Vertex first reviewed the patent and related PatentHolder information. This information was then supplemented with information available from public sources and through carrying-out telephone interviews of industry participants. Vertex then assessed all of the information gathered and developed and documented its conclusions and recommendations in a brief report.

The Result
Armed with an understanding of the market need for its patent and the potential importance and relevance of the patent in question, PatentHolder was able to make an informed patent maintenance decision. It also obtained a preliminary understanding of who might be approached regarding licensing the patent and related technology.

115 Brentwood Rd. N.,
Toronto, Ontario
Canada M8X 2C7
Tel : 416-239-7779
Fax : 416-239-5707



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