A leading technology provider for IoT solutions approached Deminor with a view to monetising their wideranging patent portfolio. The initial commercial discussions focussed on the client’s business strategy and how their patent portfolio could help support their strategic vision and mission. From here, Deminor gained an understanding of the assets which were core and those which were not core to the client’s current and future business.
Process & Approach
Deminor suggested a number of law firms to the client who met and selected one to work with. After the client had instructed their preferred firm, Deminor worked closely with the law firm in conjunction with an organisation specialising in patent transactions to review the strength
and commercialisation potential of the patent portfolio. At this point, Deminor invested seed funding in the review, sharing risk with the client.
Knowledge of the client’s core business assets and the law firm’s review of the portfolio was used to prepare a traffic light system grading the patent portfolio for immediate and longer-term assertion. The monetisation partner reviewed the market in several different jurisdictions and a map was created in order to visualise the potential campaign.
Deminor worked with the law firm to support the client in acquiring evidence of potentially infringing products that were in the market, drawing upon local knowledge and language via an established network of international offices. Infringement claim charts were prepared to assess the strength of enforcement against potential infringers and financial information was gathered to review market share and damages potential. Strong infringement cases were identified in a number of jurisdictions and Deminor shared its expertise of litigation in the key jurisdictions with the client and its law firm to develop the first optimal case. The project team discussed the risks of litigation with the client, including the risk of counter assertion against the client’s own products to ensure that all parties had fully assessed the relevant risks.
"The team at Deminor were instrumental in helping us to align our strategy and identify enforcement opportunities which we may not have considered. Their expertise has been invaluable in helping us to
shape our vision and execute the project”
After Deminor completed detailed due diligence, including a complete analysis and review by Deminor’s Chief Investment Officer, Deminor’s Investment Committee approved the finance issuing terms for funding the case. The offered terms reflected the collaborative approach employed and took a longer-term view of the partnership.
Deminor’s partnership approach enables the team to ‘live through the case’ with the client, and by doing so, gain a deeper understanding of the case, the client’s objectives, as well as the market potential for the sector.
This open communication meant that completing Deminor’s own final phase due diligence was a relatively quick and routine process, providing the necessary information for Deminor’s Investment Committee to fully
evaluate the investment opportunity and its commercial and market context.
Deminor approaches every potential client discussion with the bespoke care that is required. Its experienced international team is available to potential clients who wish to confidentially discuss patent monetisation potential and may be thinking of moving from a defensive to offensive patent strategy, enabling clients to realise revenue and commercial value from intellectual property.
Written on October 15, 2021 by
General Counsel UK at Deminor.