Monday, May 13, 2013
Marathon Patent Group – The Hot Bet?
Thursday, April 25, 2013
IP valuation and the emergence of a tradable asset class
"Many Governments have now adopted an innovation-led growth strategy and are promoting the importance of IP in underpinning their aspirations for economic growth. The race to prove the perfect model for growth persists and there appears to be a growing desire to remove all the obstacles for failure in technology transfer.
Within the Europe Commission, the Innovation Union strategy seeks to create a true innovation system in Europe where scientific excellence, a broad and strong knowledge base and the ability to bring results to the market and innovate are all included. The Innovation Union includes over 30 action points to ensure that innovative ideas can be turned into products and services that create growth and jobs.
This drive for success in taking new ideas to market is leading to much Government debate about the role that IP plays, exactly how valuable a company’s IP is -- and also the different approaches used to place a figure on this value. The mechanisms for unlocking this value, via asset-based lending, litigation or otherwise, are seen to be challenging for those smaller businesses that make up a significant proportion of the growth economy, those very companies that have to convince others that their IP is worthy of finance.
There are now three parallel studies ongoing that are seeking to inform policy surrounding these issues (did all the officials attend the same summit?...). One, funded by Scottish Enterprise (noted here), one commissioned by the UKIPO (noted here) and another funded by the European Commission. Each seeks to understand how IP is valued and could be used to secure the investment often required in the early stages of growth.
Jackie Maguire of Coller IP in the UK together with Danny Ryan and representatives of 10 other countries (including Germany, Sweden, Poland, Italy, Denmark, Belgium, Spain and Portugal ) are involved in the third study and have been appointed as IP valuation experts.
The experts were appointed by the European Commission at the beginning of 2013 to undertake a project during the course of 2013. The work of this Expert Group will help implement the Innovation Union by looking at the very specific issue of the valuation of IP, the various purposes for which it is required and how new tools and mechanisms might open up the trading of IP assets.
Some policy officials consider that the accurate valuation of IP remains a major obstacle to the emergence as a tradable asset class and that the introduction of more transparency and standardization in IP valuation procedures may render the trading of IP rights significantly more efficient and profitable. Many of us realise that it is a lot more complicated than that, but we have to start somewhere!
IP valuation mechanisms in the context of litigation, accounting and financial transactions are being currently researched and best practice examples are being compiled to show what can be achieved at a national and European level. This includes how IP is valued with respect to awarding damages and how financial institutions are lending against IP assets. The group will report at the end of the year and aims to recommend measures which will be implemented at a European level to unlock IP value.
Jackie hopes that with all of the results of all of these studies and calls for information that useful, coherence and consistent policy will be implemented and that the vision that she and Coller IP have always held, for IP to recognised as a tradable asset, will be achieved".
Monday, January 23, 2012
IP Valuation: a good introduction
Tuesday, November 8, 2011
Valuing IP in Smartphones and LTE
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| Is this where we'd still be without FRAND ...? |
In this context, attempt to value IP -- including those rights that stem from essential patent ownership “determinations” -- are subject to great uncertainties, inaccuracies and biases. Keith argues that negotiated licensing agreements can overcome these problems while reflecting significantly different positions among licensors and licensees. For example, Keith calculates that there's virtually no correlation between the results of two different studies purporting to determine essential patent ownership in LTE. Keith concludes that the oft-stated belief that smartphone IP litigation and licensing costs are stifling innovation and foreclosing market entry is a "popular and yet unproven and erroneous refrain". Far from supporting this position, such evidence as there is actually points to the opposite effect: licensing costs are modest; smartphone innovation is extensive and shows no signs of slowing with faster connections, more powerful processing and richer applications, mainly on account of FRAND-based licences.
For ease of reading, Keith's contribution (which is a good deal longer than usual and contains many tables and diagrams) can be accessed here as a PDF document.
Monday, October 4, 2010
Best Practices in Valuing IP: an eye-witness account
"I attended the recent Summit on Best Practices in Valuing Intellectual Property. Challenged with making IP Valuation Standards sound interesting to a US audience, my good friend Thayne Forbes and I had accepted the kind invitation from Business Valuation Resources to present an international perspective at Morningstar’s Headquarters in Chicago.
Mike Pellegrino (President, Pellegrino & Associates, LLC) provided excellent opening remarks and gave a very reasoned argument for why Google paid far too much for YouTube’s brand, domain name and software platform, and failed the reasonableness test.
Anxious as to how the US audience would take to the new ISO 10668:2010 Brand Valuation Standards, Thayne explained the differences and similarities between the different IP Valuation standards that are being developed or are in preparation.
It has to be said that that the approach to valuing intangible assets in the Accounting Standards such as IFRS and US GAAP are essentially the same, but currently there is only a requirement from these standards to place a value on intangible assets in the company accounts if those assets are the result of an acquisition.
Accountants and the like, therefore, have a different perspective on Valuing IP compared to those of us with technology or brand investment and development in mind.
The new developments from the International Valuation Standards Council are however starting to move the debate forward beyond the accounting profession. It was a shame that the IVSC declined to talk about their proposed Standards at the Summit, especially as they published an exposure draft and collated feedback on 3 September. For those interested though, a rustling of the pages to No 79 will reveal a whole standard for valuing intangible assets, separating IP from goodwill. These apply to any business and are proposed to come into force in 2011. The standards define the principal classes of intangible assets in an interesting way for the IP non-expert: market-related (such as trade marks, domain names and non-compete agreements), customer- or supplier-related, technology-related and artistic-related. The standards then recognize the three principal approaches of Direct Market Comparison, Income and Cost for valuing intangibles. Essentially, as long as the valuation is carried out by a suitably qualified person who takes a reasoned position, making his/her assumptions clear, our view is that while the Standards are not very specific, covering them off will provide a framework for a robust valuation.
While my job was to report on the development of Valuation Standards at the Summit , I couldn’t leave without a comment on the really good presentation of Navigating US legal minefields in IP valuation from Lisa Brownlee and Jimmy Nguyen. The In re Bilski decision of the Supreme Court has secured value in many business method patents, but futher decisions are also having a strong influence on other IP valuations. Microsoft v i4i, Costco v Omega and HydramediaCorp. v. Hydra Media Group Inc. (here) all impact on the valuation of patents and trade marks, but the cases that took my fancy were those on false markings. Stimulated by Pequignot v. Solo Cup Co, where 300 complaints from the US public were made about the 21 billion cup lids that had been stamped with an expired patent number and the public claimed damages of $500 per event of mismarking, the number of cases for false markings are running amock! A list of False Marking cases of quite considerable length is found here.
On Tuesday a petition for writ of mandamus was filed by a false marking defendant who asks the Federal Circuit to consider the following issue:
"Did the district court clearly err when it denied [defendant's] motion to dismiss Relator's false patent marking case for failure to plead supporting factual allegation sufficient to infer an intent to deceive under this Court's precedent in Pequignot v. Solo Cup Co., 608 F.3d 1356 and Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312?"
The Federal Circuit has now ordered the plaintiff to respond to the mandamus petition within 14 days. A pdf copy of the petition can be found here. A copy of the Federal Circuit's order can be found here.
Thursday, May 20, 2010
IP valuation: don't underestimate the endowment effect
IP Valuation is not an exact science and the cold rationality of classical economics often fails at giving a value to items of Intellectual Property that satisfies owners and buyers equally. In the specific case of standard-essential technology for instance, it often appears that owners of patents cling on to them with iron claws and will not license it unless the benefits of the transaction largely outweigh the cost of divulging the technology. However according to Prof. Christopher J. Buccafusco (Chicago-Kent College of Law) and Prof. Christopher Jon Sprigman (University of Virginia School of Law) IP law is still largely governed by the rational choice model, which "posits that, when making decisions, people rationally weigh the utility they will derive from different choices and assign monetary values to the options based on the anticipated utility these choices will provide". The two professors decided to call this assumption into question by applying the findings of the behavioural research to the field of IP, as it was clear to them from the beginning that IP owners aren’t more rational than any other individual engaged in a transaction. Their article entitled "Valuing Intellectual Property: An Experiment" (download here) reports on the results of an interesting experiment they carried out in order to determine if IP transactions are subject to the endowment effect, which is the most important contribution of the behavioural research in the field of economics.
“A mountain of survey and experimental data have shown that people attach substantially higher value to goods if they own them then if they are considering purchasing them. People are reluctant to part with their property, and the amount that they are willing to accept (WTA) to sell it generally far exceeds the amount that others are willing to pay (WTP) for it. This WTP/WTA gap has been termed the “endowment effect,” and it has been detected for an astounding variety of forms of property."
As Buccafusco and Sprigman asserted, the endowment effect seriously eroded the “sacrosanctness” of the rational choice model and also had repercussions on many areas of law (such as tort, contract or tort, contract, property, and criminal law).They realized nevertheless that IP law has been relatively immune to this groundbreaking finding of the behavioural research and decided to set things right. Their experiment is all the more interesting so as IP goods are actually created by the owners and are non-rival (their consumption by one person does not prevent their consumption by another). Moreover their experiment – based on a market for poems – is the first one to ask subjects to actually create an object and then value it.
Not so surprising yet quite thought-provoking, the results of Buccafusco and Sprigman's experiment prove that actors engaging in an IP transaction are only "boundedly rational", much like in any other transaction environment. They surely are utility-maximisers, however the preferences on which they based their decisions are very unstable instead of being a constant, as the rational actor model assumes. Their experiment also showed that the difference between WTA and WTP is even higher than expected, even though poems are non-rival goods.
“Our findings suggest that private transactions in creative goods may face significant transaction costs arising from cognitive biases that drive the price that creators and owners of IP are likely to demand for transfers considerably higher than what buyers will, on average, be willing to pay. This does not mean, of course, that transactions in IP will not take place – we see such transactions happening out in the world every day. Our research suggests, however, that IP transactions may occur at a level that is significantly suboptimal and that the baleful effect of cognitive and affective biases is likely to be more serious for transactions in works of relatively low commercial value, or for which no well established custom or pattern helps to inform valuation.”
Tuesday, May 11, 2010
IP Valuation Courses: some responses
Last Friday, in "IP Valuation Courses: a reader asks ...", this weblog posted this request for information: "A reader has emailed IP Finance to ask if it knows of any courses on intellectual property valuation that are (i) general, in the sense of not being specific to any one type of IP right or market sector, and (ii) general, in the sense of being at a high enough level to be understood by someone who is not an accountant or a financial whizz-kid but who needs to be able to identify the main issues and thus be equipped to follow the general thread of what accountants and whizz-children tell him.From Chris Bartlett, until recently Senior IP Valuation & Contracts Manager at Glasgow-based ITI Techmedia and currently Chair of the Education Committee of the Licensing Executives Society (Britain & Ireland), comes this response, which both poses a question and provides some information:
If you know of any such courses, please let me know. Also, if you think you could help in putting such a course together, please say so."
"I do know that there are a number of dedicated IP valuation courses available in the UK, but in my experience these can be very sector specific, typically healthcare and pharma, and also generally assume an audience sufficiently experienced in the general IP field that they now have a wish to look at valuation methodologies as a fairly detailed specialist area.If anyone wishes to contact Chris regarding his invitation, can he or she please email him here.
I am not aware of any single course which fits your criteria though I would certainly be very interested in working with others to create one - indeed building such a course fits within my present strategy for new LES courses in the UK.
In the meantime, perhaps you may like to inform your readership of the forthcoming LES Fundamentals of Intellectual Asset Management course at Cranfield in June, in which valuation at precisely the pitch your reader desires is presented within a broader context of intellectual property and asset management as a whole. Details can be found here.
I would welcome, perhaps through the medium of your blog, proposals from suitably qualified practitioners to provide both content and their presentation skills for provision of a one day course-cum-workshop targeting IP valuation for non-IP specialists, managers and IP newcomers".
The IP Finance weblog has also received details of this course from the Business Development Academy which, we learn, has been taught all over the US, UK, Europe and Israel and that over 200 representatives from Fortune 1000 businesses have attended the course.
Friday, May 7, 2010
IP valuation courses: a reader asks ...
A reader has emailed IP Finance to ask if it knows of any courses on intellectual property valuation that are (i) general, in the sense of not being specific to any one type of IP right or market sector, and (ii) general, in the sense of being at a high enough level to be understood by someone who is not an accountant or a financial whizz-kid but who needs to be able to identify the main issues and thus be equipped to follow the general thread of what accountants and whizz-children tell him.If you know of any such courses, please let me know. Also, if you think you could help in putting such a course together, please say so.
Tuesday, April 28, 2009
Finnish Symposium on IP valuation
This symposium is the second in a series of four international symposiums on the topic. Its primary aim is to raise awareness of IP valuation issues and increase dialogue among stakeholders. The organizing parties in addition to National Board of Patents and Registration are the Hungarian Patent Office, the Austrian Patent Office and the UK Intellectual Property Office, as partners in this initiative.
Saturday, December 20, 2008
Hungary IP valuation conference: the papers
On 27 to 28 November 2008 the Hungarian Patent Office hosted its first Intellectual Property Valuation in Practice Symposium. More information concerning the event can be found here and various presentations can be downloaded too. These are:
Session 3: IP Valuation Services Session 4: IP Valuation for Taxation, Accounting for IP and IP Valuation standardisationSession 1: The demand for IP valuation
"Biotech start-up case study - spin-off company formation and IP" Dr. Imre Kacskovics, Immunogenes, Hungary
"IP valuation and management at Finnish universities" Veijo Ilmavirta, Helsinki University of Technology, Finland
"Managing IP portfolios" Ernő Duda, SOLVO Biotechnology, Hungary
"IP valuation for investors" Alois Peham, Siemens, Austria
"Introduction to IP valuation for transfer pricing" Edgar Ahrens and Eszter Sager,
PricewaterhouseCoopers, Hungary
Session 2: Practical Methodology Best Practice
IP Valuation Methods
"Introduction to IP valuation" Peter Kaldos, Hungarian Patent Office
"Valuation in life sciences: An introduction to the Risk Adjusted Net Present Value method" Ralph Villiger, Avance, Switzerland
"Technology/patents analysis and market factors" Jim Asher, Coller IP Management, United Kingdom
"Patent evaluation for (high-tech) start-ups:An introduction to the relief-from-royalty method" Thomas Schwingenschlögl, TPA Horwath, Austria
"IP Valuation and M&A" Kelvin King, Valuation Consulting Ltd.: a BNP Paribas company, United Kingdom
"IP valuation methods used for litigation and infringement" Rainer Engels, Federal Patent Court, Germany
"Licensing-fee approach for patent evaluation" Peter Pawlek, Austria Wirtschaftsservice
IP valuation services presently offered and in the pipeline
"Working with valuers, instructions and due diligence" Kelvin King, Valuation Consulting Ltd.: a BNP Paribas company, United Kingdom
"IP valuation at Avance Gmbh" Ralph Villiger, Avance, Switzerland
"IPSCORE" Nils Omland, PatentSight, Germany
"IP valuation at the Hungarian Patent Office" Peter Kaldos, Hungarian Patent Office
"Market based methods and IP valuation at IP Bewertungs AG" Dr. Ulrike Rehn, IP Bewertungs, Germany
"IP valuation at Coller IP Management" Jim Asher, Coller IP Management, United Kingdom
"Introduction to taxation and accounting standards for IP" Eszter Sager, PricewaterhouseCoopers, Hungary
"General principles of proper patent valuation: The forthcoming European standard" Dr. Alexander Wurzer, Steinbeis-Hochschule, Germany
Thursday, August 28, 2008
Cost-based valuation: is it a live issue?
An article by Simon Rowell, "Understanding Intellectual Property Value", was published earlier this month on IPFrontline.com. Reviewing IP methodology valuations, it inevitably discusses the cost-based, market-based and income-based techniques. On the cost-based methodology it says this: All of this is fine. But now here comes my confession of ignorance. I have never, in my admittedly limited and subjective personal experience, seen a live example of the cost approach that has ever been used for anything to do with IP rights. Does anyone in fact use it? Or does it only exist in articles and talks on IP valuation as an example of something that isn't much use?"... This method looks at the historical cost incurred to develop and create the intellectual property. ...
There are many inherent problems with the cost approach. The most significant is that it fails to reflect the earnings potential of the intellectual property. The value of intellectual property is derived from its earning potential, and not its cost. ...If the intellectual property offers significant economic advantage in an active market, the use of the cost method is likely to understate its value. If, on the other hand, development has been inefficient or lengthy, the use of the cost method might overstate its value. Also, for many identifiable intangible assets, it may not be possible to develop a replacement, or it may not be possible to estimate the replacement cost.
In its favour, the cost approach is useful as a readily calculated bottom-line valuation".
If readers can enlighten me, perhaps referring me to examples of active use of the cost-based approach, I'd be very grateful. If it seems that no-one does use it, can we make all articles and talks on IP valuation one paragraph shorter by dropping it?
Friday, June 6, 2008
The value of designs - "Design can deal a winning hand"
An article on the Packagingnews website of 5 June highlights the difficulties of measuring the value of designs and the perceived value to clients.
It is available at http://www.packagingnews.co.uk/news/814874/Design-deal-winning-hand.
It mentions the RODI – the “return on design investment”.
The definition of this term on the Design Council’s website (see http://195.157.47.227:8080/design-council/showGlossary.do#g17)reads as follows: “Similar to standard ROI (return on investment), RODI isolates the specific return on design spend. Although only one in eight businesses currently pinpoints RODI with accounting procedures, we hope that doing so will become more common.”
Further information on this intriguing ROI measuring tool can be found for example at: Design Council’s Value of Design Factfinder - http://www.designcouncil.org.uk/en/About-Design/Research/Value-of-Design-Factfinder/ - “Businesses which use design perform better than their rivals.”
or at
VMSD (the “leading magazine for retail designers and store display professionals”) - http://www.visualstore.com/index.php/channel/62/id/12874 - “It’s the holy grail of retail design: demonstrate the return on investment that retailers will net from the new store layouts they commission.”
And this is a link to the UK’s Design Business Association’s Design Effectiveness Awards page which explains the judging process of the Award: http://www.dba.org.uk/awards/judging.asp. It sets out details of how the Award judges assess the commercial impact of a design.
Unfortunately we have just missed the entry deadline for 2008 – next time lucky in 2009.
Monday, May 12, 2008
"Spurious precision" -- a reminder
As advertised earlier on this blog, Oliver Rivers has agreed to give a short talk on Tuesday 27 May at 5pm at the London office of Olswang, solicitors (map here). The talk is entitled "Spurious precision" -- a concept that will be familiar to anyone who has been involved in the debate between the need to place IP rights within a range of values and the requirement that it have one ascertainable value at the point at which something happens to it.Oliver has extensive experience working on valuation issues for private equity and venture capital funds, and firms back by PE or VC funding. He has a particular interest in the valuation of creative intellectual property, and recent assignments have included the development of mergers and acquisitions strategy at Boosey and Hawkes, the world’s largest classical music publisher (owned until recently by Hg Capital), and at Chorion (currently owned by 3i), which controls the literary estates of Agatha Christie and Enid Blyton. Before completing his MBA at London Business School, Oliver worked for ten years in the music industry. Between 1993 and 1999 he was a freelance classical record producer, working for most of the major labels, including BMG, Virgin Classics, EMI, and Warner Classics, and some of the most important independents. In 1996 he won a Gramophone Award for Best Selling Classical Album of the Year. Between 1999 and 2003 he was Chief Executive of the chamber orchestra Sinfonia 21.
The meeting should finish by 6.30pm, inclusive of light refreshments: the talk will last around 20 minutes, following which there will be a chance for some light networking, Everyone is welcome. If you'd like to attend, email me here.
Wednesday, April 30, 2008
"Spurious precision" and the IP Finance Group
Oliver Rivers has agreed to give us a short talk on Tuesday 27 May at 5pm at the London office of Olswang, solicitors (who have kindly agreed to provide a room and some light refreshment). The talk is entitled "Spurious precision" -- a concept that will be familiar to anyone who has been involved in the debate between the need to place IP rights within a range of values and the requirement that it have one ascertainable value at the point at which something happens to it.
We have the room till 6.30pm: the talk will last around 20 minutes, following which there will be a chance for some light networking, information-exchange and generally thinking about where we go from here. As before, everyone is welcome. If you'd like to attend, email me here.
For the record, the launch of this weblog was one of the fruits of the first meeting of the IP Finance Group in January. Despite its niche subject-matter and relative infancy, this blog has posted 73 items since the last week in January, receiving 3,888 casual visits between now and today. It has notched up 60 email subscribers and over 80 RSS-feeders. It has a page rank of 4 -- which suggests that quite a few other sites are linking to it -- and is gradually growing in momentum. The basis of a bibliography has also been put together in the side bar.
The more information we can spread about the IP/money interface, the better-informed will be the debates over IP as an asset and the decision-making processes that govern it. If you value this weblog, please tell your friends about it and let them know that it's always available to them.

