What led you to a career in intangible asset management – and what advice would you offer for someone considering following the same path?
One of my capstone classes at Chapman University covered leveraging the intangible assets of a defunct business – a company with a patented water metering technology. While other groups focused on heavy technology integration, my team focused on leveraging the intellectual property with minimal changes. We tackled the challenge of taking a company’s raw patent and strategising how to create more from it. My team repackaged the product, bringing new life to the assets.
One summer, I was fortunate to have an internship at Silicon Valley Bank, the leading bank in the venture capital space, at its Sandhill Road location. This was an exciting experience – to be involved with start-up companies that were backed by venture capital and working with some brilliant founders and their tangible assets – and definitely gave me the ‘IP bug’.
After graduation, I worked for 10 years at Sherwood Partners, a corporate restructuring firm that focused on either winding down or restructuring venture capital and bank-backed companies. My primary focus was to monetise the intangible assets of our client companies.
These experiences culminated in leveraging intangible assets and strategising how to make more from less. My duties were to administrate each unique knowledge base spanning various types of business and focus on maximising the value of the intangible assets involved. This was when I decided that monetising intangibles was something that I wanted to do.
How have client demands changed over the past five years and how have you adapted to meet these needs?
Clients fundamentally want knowledge, a relationship with someone that can relate to them and their intellectual property, and, most importantly, someone that will deliver results. This starts by breaking down the barriers to entry and understanding your client’s views, as well as sharing hard truths. These are the basic building blocks to properly maximise asset value for all parties. Hard work is infectious and without it, you will never be able to maximise value. There are no shortcuts to a successful sale or licensing agreement.
The relationship that you have with clients will be amplified and strengthened as they see the value that you bring to their intellectual property. Things can become contentious when results do not align with expectations, which is why it is so important to set expectations early and continually adjust when working with others
You have been entrusted with patent work by a range of organisations. What are the key skills for a top-level IP professional to hone?
My main attribute is being deeply inquisitive. Being able to expand on the information provided by clients and share insights or information that was previously unavailable to them has proved to be a great way to uncover hidden gems. This is what sets me apart from other strategists. I am entrusted with patent work in almost every industry on a regular basis. My clients have been impressed with my ability to deliver not only information, but also solutions and results. On the creative side, understanding patents with an eye for detail is extremely important. This comes with time and understanding the industry and its nuances.
What impact do you expect the UK Supreme Court’s decision in Unwired Planet and several other recent significant decisions in SEP cases to have on your clients’ assets and the wider licensing market?
The UK Supreme Court’s decision is precedent setting as it sets out the calculation to determine a global royalty rate on a patent. This will provide a tremendous amount of clarification, as well as a safe harbour for patent owners that are seeking to enforce SEPs, especially through a FRAND licence, when dealing with jurisdiction issues.
It will be interesting to see how this develops over the next few years, as the United Kingdom makes itself a one-stop shop for such proceedings, and whether other countries will follow suit.
Which of the patent monetisation deals that you have worked on are you most proud of – and why?
I find myself most proud of the deals where we uncovered multiple paths to maximise the value of the client’s assets. Often, these paths are completely different to what the IP owner envisioned, creating both additional value and a wider range of potential buyers. Being versatile and having knowledge of the market are key to finding the best buyers. This is not strictly limited to patents, but also extends to other intangibles including data, know-how and trade secrets.
The IP transactions space is a relatively young one. How do you manage expectations and maintain close working relationships with clients who might be new to the developing market?
To manage expectations, always under promise and over deliver. You never really know the situation for a potential buyer. In-depth due diligence, understanding the market and having realistic expectations are vital for client relationships. Many IP owners often have unrealistic expectations and insist on driving forward with these. Deep conversations and understanding of both the relevant intellectual property and the marketplace are essential. Once trust has been established, clients will slowly start to listen and understand that there is potentially more to the picture.
Where clients continue to be unrealistic, we do not compromise or take shortcuts. Shortcuts provide an opportunity to blame our work effort and the overall result. Without a realistic approach for everyone, including outside vendors, it is best not to take on the project.
This has done well for us and is why we have maintained strong relationships with our clients and potential buyers.
What impact do you expect AI to have on the wider IP ecosystem?
AI is dramatically changing the IP ecosystem. However, we have seen many inventors and their lawyers or patent agents skipping important efforts to complete a thorough due diligence on prior art when so many new tools can provide multiple answers with significantly less effort than five to 10 years ago. It can be disheartening when the inventor is not a leading expert in the field and does not have their patent agent, their attorney or a third party evaluate the claims and technology landscape in the public domain – especially if their strategy is only to license their intellectual property once it has been registered. In many instances, important prior art in the public domain gets missed in filings, and there is often very little strategy or structure to the patenting of a portfolio. It is up to the client and patent agent to establish an intimate relationship or bring in a third party like agencyIP to break the ice and keep the strategy and goals aligned and alive!
AI is – and will continue to be – an extremely valuable tool to gain a quick understanding of the IP landscape. This ensures a much better ‘go to market’ result when it comes to the development and eventual use, sale or licensing of the intellectual property. Those that do not embrace AI will eventually fall behind.
That said, an interesting question is who is the inventor where AI has made profound recommendations? It will be interesting to see how the authorities address this.
What do you expect to be the next big tech sectors to take off – and how can companies and investors capitalise from these?
Decentralised finance has the potential to be revolutionary. This is an ecosystem that does not require financial mediators such as banks and brokers but rather operates on blockchain applications. We have relied on software to simplify our lives for years and, with the application of smart contracts governed by software, I believe we can make the financial sector much more efficient. Companies and investors can capitalise on these developments by positioning themselves at the forefront of leveraging the technology. Bitcoin has made a comeback and we will slowly see decentralised networks take on a bigger role in future.
Other sectors that will have a large impact on society involve technologies that have multi-use applications (eg, off-planet applications, including energy, food, material science and biopharma).
What changes would you like to see made to the US licensing landscape – and how likely do you think they are to take place?
An open platform for licensing leveraging, a decentralised ledger and improved patent-granting authorities so that there are few to no reasons why a patent could or should be invalidated. While this is more a dream than a reality, the tools exist to make this possible. Such developments would not only improve licensing, but also increase our ability to innovate globally and reward those that invent in a faster and fair manner.
How fair is it to say that the United States has become less patent-owner friendly over the years and what could be done to change this opinion?
I will ignore the jurisdictional element and comment on this more broadly. In my opinion, there has been minimal fairness to patent owners based on the merits of the patents themselves. Instead, decisions are based on how they are being leveraged and by whom. This is itself counterproductive to innovation.
Joshua Pichinson is involved in corporate restructurings at Sherwood Partners – a leading corporate advisory firm in the tech space. He is also the managing director of agencyIP, which focuses on IP marketing, sales, licensing and strategy. Over the past decade, Mr Pichinson has built agencyIP into one of the most sought-after IP agencies in the United States. Mr Pichinson is in constant demand for IP strategies and solutions and has been on numerous panels focused on intangible assets.