Steger IP, LLC
What led you to establish your own firm and what advice do you have for somebody considering doing the same?
I have always been interested in the intersection between technological development and the legal protection of inventions. Protecting the business advantages that inventors create by investing in innovation is critical in today’s high-tech society and has led to many of the incredible advances that we have seen over recent decades. I established my firm to help these innovators obtain a return on their investment by creating a strategy specific to each client. Each company has different business goals, risk profiles and resources to invest in the monetisation process and understanding this is key to developing the correct strategy. Thanks to my diverse background and experience, I am able to create individualised strategies for my clients, and it is this process that led me to create my own firm.
Which of the patent monetisation deals that you have worked on are you most proud of – and why?
I have had the good fortune to work on some of the largest patent transactions in history and for some of the largest companies in the world. However, the matters that I am most proud of are the deals that have truly made a difference in my clients’ lives. I have worked with a number of operating companies that were experiencing economic difficulties and needed an infusion of cash to remain in business. I was able to complete transactions on behalf of these clients that allowed them to keep going and bought them enough time to thrive. I have also worked with individuals who poured their heart and soul into creating inventions that were broadly adopted and improved products in the marketplace, but who were unable to capitalise on their inventions through operations because they could not compete with major tech companies. I was able to close deals on their behalf that allowed them to realise the value of their innovations.
The IP transactions space is a relatively young one. How do you manage expectations and maintain close working relationships with clients that might be new to the developing market?
The customised analysis described above helps us to develop a deep understanding of clients’ business goals and risk sensitivities. We also try to help clients understand what is reasonably achievable in any transaction by conducting a deep analysis of the patents at issue, including claim coverage, infringement and market analysis. Using this information, we develop detailed financial models for what a licensing campaign could be expected to generate, with or without litigation. Doing this work before launching a monetisation campaign helps to set reasonable expectations and to avoid some of the pitfalls of going to market with pricing guidance that is too high for the portfolio, which can seriously handicap any monetisation campaign.
What do you expect to be the next big tech sectors to take off – and how can companies and investors capitalise on these?
Any areas where there is a convergence of technologies in a new industry or product line has the potential to be the next big area for patent monetisation, following a similar trajectory that we saw with smartphones. One candidate is medical devices, where there is a convergence of biology, computer science and electrical, mechanical and chemical engineering. Another is related to the Internet of Things, which combines connectivity technology, sensors and cloud computing and Big Data analysis. Companies in these areas, where technologies converge and new entrants challenge established players, can learn from the smartphone patent wars and hopefully create a more efficient system to license their technologies to all players in the emerging industries.
What changes would you like to see made to the US patent landscape – and how likely do you think they are to take place?
I would like to see greater certainty in determining the scope of protection afforded to patents. A significant amount of uncertainty was injected into the patent system in a short period, which created huge gaps between the value expectations of buyers and sellers. It has taken time to sort out the many changes to the patent system and controlling laws. Having more certainty in the system would help to bring together the positions and valuations of people sitting on opposite sides of the negotiating table, creating an environment that is more amenable to negotiated settlements.
Steven Steger is the founder of Steger IP, where he concentrates on all aspects of monetising patents through sales, assertion campaigns and strategic IP counselling. He has a broad range of IP experience, having served as chief IP counsel at multinationals and start-ups and represented a broad range of clients in private practice. His combination of in-house and major law firm experience gives him insight into what is important to businesses from an IP perspective.
Click here to see his IAM 300 2020 profile.