The landscape for patent eligibility in the United States continues to lack certainty – what predictions would you make for this area in the next 12 months?
With such uncertainty about the extent of patent protection, it is necessary to adopt a broad perspective with regard to IP assets. In our valuation and investment support work, we encourage our clients to increase their emphasis on know-how and trade secrets, and we advise them on best practices in identifying trade secrets and taking the appropriate steps to protect and value them.
Our litigation support activity provides another view of the value of trade secrets. We have been asked more and more to provide expert analysis and testimony on the value of trade secrets and know-how in matters relating to business disputes.
How do you measure the success of an IP strategy?
We consider it a success when we help clients to achieve their goals, both financially and qualitatively. On the financial front, we emphasise both the current and potential future value of the full range of a client’s IP assets, and we chart a path to realise that value. It is especially satisfying to help a client realise value in their intellectual property in ways they had not considered. For example, we frequently provide clients with a fuller understanding of the value of their know-how, trade secrets and other intangibles such as data assets.
At other times, success is more qualitative. We feel rewarded when we have contributed to the market success of technology that may not be a blockbuster but that does have a profound effect on people’s lives. We have been fortunate to have driven IP strategy and execution for over a dozen new medical devices now addressing previously unmet needs for patients.
Which emerging technologies are having the biggest effect on the IP transactional space?
At Upstream, we work with a broad range of emerging technologies on a regular basis, ranging from gene therapy to advanced battery technology and AI. One area that stands out in terms of IP value and transactions is the application of data analytics to improve healthcare outcomes.
We have helped a number of clients recognise and realise the significant value of not only their healthcare data analytics, but also in the data that they accumulate, process and analyse. I see the value of data assets as an underappreciated aspect of asset valuation and one that will have significant impact on enterprise value and in related transactions.
What effect – if any – are you seeing the climate crisis have on the licensing landscape?
As innovators and entrepreneurs respond to the challenges presented by climate change, we are seeing both financial and strategic investors focus on potentially valuable technology in a number of applications. Upstream has a number of clients with early-stage technologies addressing climate change, including carbon capture technology, eco-friendly building material solutions and advanced battery technology, to name just a few.
You are the founder of Upstream Partners – what led you to found your own firm and what advice do you have for anyone considering doing the same?
I formed Upstream Partners 11 years ago in order to better serve clients across the full spectrum of the business of intellectual property.
Prior to that I was a partner in a national consulting firm, leading teams in patent infringement damages analysis and IP valuation. And with Upstream, I have built upon that and recruited an experienced team that addresses a broader range of clients’ needs. We assist clients with IP monetisation strategy, licensing transactions, technology investment, IP valuation, in addition to expert witness analysis and testimony.
What has brought me great pride is the extent to which we have been sought out to provide expert witness analysis and testimony in patent litigation and technology disputes, due to our track record in delivering value from IP assets. I have the privilege of working with outstanding attorneys from the finest law firms in the United States, and our team’s analysis has been integral in a large number of landmark cases.
As a leader, I encourage anyone interested in starting their own firm to recruit team members who are curious, enjoy learning, work hard and are fun to be with. Then allow them to thrive, build on their track record, and empower them to be leaders. It is particularly gratifying to see other members of our team, such as Juhee Park, forging a reputation in IP valuation, strategy and in expert witness analysis.
Mark Chandler is founder and managing director of Upstream Partners, an IP finance and strategy consulting firm. He holds an MBA from the Wharton School of the University of Pennsylvania and a BS in Electrical Engineering from Bucknell University. Mr Chandler and his team assist clients in realising value from their IP assets through licensing and investment transactions. He also provides expert witness analysis on damages and licensing in patent litigation and business disputes.