WO2000055791A2 - Bourse en ligne de brevets d'invention et de licences - Google Patents

Bourse en ligne de brevets d'invention et de licences Download PDF

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Publication number
WO2000055791A2
WO2000055791A2 PCT/US2000/006846 US0006846W WO0055791A2 WO 2000055791 A2 WO2000055791 A2 WO 2000055791A2 US 0006846 W US0006846 W US 0006846W WO 0055791 A2 WO0055791 A2 WO 0055791A2
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WO
WIPO (PCT)
Prior art keywords
intellectual property
computer
buyer
exchange
bid
Prior art date
Application number
PCT/US2000/006846
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English (en)
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WO2000055791A8 (fr
Inventor
Nir Kossovsky
Bear Brandegee
Alexander K. Arrow
Robert M. Johnson
Original Assignee
The Patent And License Exchange, Inc.
Priority date (The priority date is an assumption and is not a legal conclusion. Google has not performed a legal analysis and makes no representation as to the accuracy of the date listed.)
Filing date
Publication date
Application filed by The Patent And License Exchange, Inc. filed Critical The Patent And License Exchange, Inc.
Priority to KR1020017011744A priority Critical patent/KR20020009579A/ko
Priority to AU37491/00A priority patent/AU3749100A/en
Priority to EP00916381A priority patent/EP1252591A2/fr
Publication of WO2000055791A2 publication Critical patent/WO2000055791A2/fr
Publication of WO2000055791A8 publication Critical patent/WO2000055791A8/fr

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Classifications

    • G—PHYSICS
    • G06—COMPUTING; CALCULATING OR COUNTING
    • G06Q—INFORMATION AND COMMUNICATION TECHNOLOGY [ICT] SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES, NOT OTHERWISE PROVIDED FOR
    • G06Q30/00—Commerce
    • G06Q30/06—Buying, selling or leasing transactions
    • G—PHYSICS
    • G06—COMPUTING; CALCULATING OR COUNTING
    • G06Q—INFORMATION AND COMMUNICATION TECHNOLOGY [ICT] SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL OR SUPERVISORY PURPOSES, NOT OTHERWISE PROVIDED FOR
    • G06Q50/00—Information and communication technology [ICT] specially adapted for implementation of business processes of specific business sectors, e.g. utilities or tourism
    • G06Q50/10—Services
    • G06Q50/18—Legal services

Definitions

  • IP intellectual property
  • patent rights for example, require formal application and evaluation proceedings (patent prosecution) in the United States patent and Trademark Office that may last for several years.
  • a patent grants its owner a limited monopoly in the patented invention starting on the date the patent is granted for a term of 20 years from the filing date of the patent application.
  • the effective patent term may be significantly shorter than the 20 year term set by the statute .
  • the method and apparatus of the present invention provide an online patent and license exchange which enables potential licensors and licensees of patents and other intellectual property rights to efficiently and reliably transact IP license or assignment agreements.
  • Three markets are part of the exchange: a license market, an options market and a securitized asset cash flows market .
  • the online patent and license exchange comprises a comprehensive database of IP rights offered for licensing on the exchange, including a reliable market value estimation of the price of each IP asset listed on the exchange, a transaction closing service, a patent insurance service and an escrow service.
  • Fig. 1 is a block diagram of a computer system in accordance to an embodiment of the invention.
  • Fig. 2A is a block diagram of the hardware/software structure of the client computers of Fig. 1.
  • Fig. 2B is a block diagram of the hardware/software structure of the server computer of Fig. 1.
  • Fig. 3 is a flow diagram of an exchange operation of the server program of Fig. 2B.
  • Fig. 4 is a flow diagram of an auction operation of the server program of Fig. 2B.
  • Fig. 5 illustrates a patent information page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1.
  • Fig. 6 illustrates a search menu page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1.
  • Figs. 7A and 7B illustrate a search page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1 .
  • Fig. 8 illustrates a search results page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1.
  • Fig. 9 illustrates a results information page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1.
  • Fig. 10 illustrates a bid page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1.
  • Fig. 11 illustrates an auction status page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1.
  • Fig. 12 illustrates a bid details page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1.
  • Fig. 13 illustrates a message board page displayed by the web browser of Fig. 2A on screen of a client computer during operation of the computer system of Fig. 1.
  • Fig. 14 is a block diagram of the exchange enabled by the computer system of Fig. 1.
  • Fig. 15A is a table illustrating Schedule A used in calculating the suggested price according to Eq. 2.
  • Figs. 15B1 and 15B2 are tables illustrating Schedules Bl and B2 used in calculating the suggested price according to Eqs . 2 and 5.
  • Fig. 15C is a table illustrating Schedule C used in calculating the suggested price according to Eq. 2.
  • Fig. 15D is a table illustrating Schedule D used in calculating the suggested price according to Eq. 2.
  • Figs. 15E1, 15E2 and 15E3 are tables illustrating Schedules El, E3 & E4 used in calculating the suggested price according to Eqs. 2 and 7.
  • Fig. 15F is a table illustrating Schedule F used in calculating the suggested price according to Eq. 10.
  • Fig. 16 is table providing a guide for interpreting patent rating values.
  • FIG. 1 A computer system 100, according to an embodiment of the invention is shown in Fig. 1.
  • Computer system 100 is shown in Fig. 1.
  • Fig. 2A illustrates the hardware/software structure of a client computer 120n.
  • a web browser program 210 is executed on top of operating system 220, which in turn controls hardware layer 230.
  • Hardware layer 230 provides a physical connection to global -area network 130.
  • Fig. 2B illustrates the hardware/software structure of server computer 110.
  • server program 240 is executed on top of operating system 250, which in turn controls hardware layer 260.
  • Hardware layer 260 provides a physical connection to global-area network 130.
  • Server program 240 also stores and retrieves information in database 270 via operating system 250.
  • Users of computer system 100 access the patent and license exchange of the present invention via a client computer 12On.
  • Web browser program 210 first establishes a connection to server program 240 over global-area network 130. Users can then access a website for the patent and license exchange via web browser program 210, server program 240 and database 270.
  • Server computer 110 can be any special or general purpose computer suitable for maintaining a website such as a Pentium-based computer, available from a variety of third parties, an UltraSparc workstation, available from Sun Microsytems, Inc. of Mountain View, Calif., an RS6000 workstation, available from IBM of New York, etc.
  • Client computers 12On can be any special or general purpose computer suitable for accessing a website over the Internet, such as any a Pentium-based computer, available from a variety of third parties, a Macintosh computer, available from Apple Computer, Inc. of Cupertino, Calif., etc.
  • Operating systems 220 and 250 are any suitable operating system for controlling client computers 120n and server computer 110 such as Windows98, Windows NT 4.0 or Windows2000, available from Microsoft Corp. of Redmond, Wash., MacOS 8.5, available from Apple
  • Web browser program 210 is any web browser program such as Internet Explorer 5.0, available from Microsoft Corp. or Netscape Navigator, available from Netscape Communications of Mountain View, Calif.
  • Fig. 3 is a flow diagram of an exchange operation 300, in accordance to an embodiment of the invention.
  • a seller stores data describing the IP listed on the exchange in database exchange 270.
  • a sample of the information stored by the seller in exchange database 270 is shown in Figs. 5A-5C.
  • Figs. 5A-5C are partial views of patent information page 500 listing the information captured in exchange database 270 for a given patent listed on the exchange.
  • the buyer can view the information shown in Figs. 5A-5C by simply scrolling the contents of patent information page 500.
  • a potential buyer can then retrieve the information stored by the seller in exchange database 270 by searching exchange database 270 in stage 320.
  • a search menu page 600 is shown in Fig.
  • search results page 800 While partial views of a search page 700 are shown in Figs. 7A and 7B .
  • the buyer is able to select among several search options on search menu page 600.
  • the buyer can then enter search criteria on search page 700.
  • the buyer can view the information shown in Figs. 7A and 7B by simply scrolling the contents of search page 700.
  • the results of the search are shown in search results page 800
  • Fig. 11 illustrates an auction status page 1100 used to notify buyers and sellers on the status of current bids. As shown in Fig. 11, each market participant can act as both a seller and a buyer. The seller can then obtain more detailed information about each bid submitted for the patent by clicking on a corresponding link on auction status page 1100, causing bid detail page 1200 (Fig. 12) to be displayed.
  • Fig. 13 illustrates a message board page 1300 used to communicate the acceptance of the bid and other closing related information to sellers and buyers.
  • Fig. 4 is a flow diagram illustrating an auction operation 400, in accordance to an embodiment of the invention.
  • Auction operation 400 is similar to exchange operation 300, except that multiple bids may be entertained by the seller in stages 410 and 420.
  • the winning bid is transmitted to the seller in stage 430.
  • Stage 440 determines whether the seller has accepted the winning bid, in which case the IP rights are transferred from the seller to the buyer in stage 450. Otherwise, stages 410-440 are repeated until either the seller either accepts a bid or withdraws the lot from the auction.
  • the exchange website (pbx.com) supports three separate markets: a patent asset market, an asset options market, and a securitized asset cash flows market .
  • the patent asset market is an electronically- operated forum for buying and selling IP rights.
  • a corporation in need of new products for its product pipeline shops the market, brushing over technologies that are not of interest, while placing bids on those that are.
  • the exchange provides a user-friendly graphic interface, a comprehensive listing of available technologies, an intuitively easy way to search the listing to find those of interest, and a suggested selling price for each technology offered.
  • the actual price, agreed upon by buyer and seller in the markets, will be independent of the suggested license price.
  • the exchange provides a suggested price.
  • the options market is an electronically-operated forum for buying and selling IP rights.
  • the specific rights are options to technology which are sold concurrently with an option exercise price that reflects the costs of converting the option into a full license or patent sale.
  • the exchange provides a user-friendly graphic interface, a comprehensive listing of available technology options, an intuitively easy way to search the listing to find those of interest, and a suggested selling price for each option offered. It is conceivable that a single IP asset could be offered simultaneously as a license and as an option, the exchange electronically monitors the factors affecting pricing continuously so that the recommended asset and option prices are rationally related.
  • This market enables trading in grouped IP assets.
  • the groupings and valuations are modeled on REITs.
  • the computer system of the present invention provides an ideal IP rights exchange for high integrity participating global buyers and sellers. These participants, known as Qualified Licensing
  • QLAs Quality of Service Agents
  • Table 1 below.
  • Principal QLAs are originators or owners of IP assets or buyers and users of IP assets.
  • Intermediary QLAs are agents acting on behalf of a principal buyer or seller.
  • Government entities, universities and businesses not meeting the exchange' s participation criteria or not wishing to participate directly, may buy or sell IP rights through intermediary QLAs, as shown in Fig. 14. Table 1.
  • the auction markets offer a personalized, inviting and friendly environment. A brief description of the market process and the business experience follows. Details of auction operations are provided below.
  • the Exchange services two types of participants - QLAs and niche participants.
  • the QLA whether an attorney or licensing executive, has unlimited access to the site for listing, inventory searches and bidding.
  • the niche participant has access to different elements of the site depending on the terms of the agreement with the exchange.
  • the exchange offers an intuitive, easy and fun IP assets search and bid experience.
  • Navigating the Site An intuitive and elegant menu-driven Web browser makes navigating the sight and completing listing, search and bid forms easy.
  • a context sensitive help facility supports all software functions .
  • Exploring Inventory A sophisticated bidder interface reviews online product information including detailed product descriptions and images (graphs, charts, and photos) , as well as real-time bid information. This interface provides optimal participation and ease of use. Scheduling Special Auction Events One of the crucial success factors for the exchange market is to bring the maximum number of buyers interested in specific IP assets to the opening of special auction events for selected IP assets inventory. A simple means of achieving this goal is to set up a regular auction schedule and publicize in advance so that QLAs can set aside time to participate in the auction.
  • pl-x.com Independent Valuation to Expedite Pricing Every patent listed on pl-x.com will receive a valuation based on the TRRU valuation model.
  • the actual license price, agreed upon by buyer and seller in the pl-x.com market, is independent of the pl-x.com suggested price.
  • the suggested price is provided by the pl-x.com exchange as a service to both buyers and sellers to help expedite valuation and negotiations.
  • the seller can chose whether to use the TRRU price as their asking price, as their secret floor, or as a point of reference for their own valuation process.
  • the TRRU price is designed to give owners a "reality check," so they don't price a patent out of the market - or undervalue their intellectual property and to give buyers confidence that the asking price is reasonable.
  • the TRRU valuation also assists pl-x.com in determining the amount of insurance coverage to be provided and the commission due.
  • the pl-x.com TRRU suggested pricing model uses current market variables and the Black-Scholes Options Pricing model and real options theory to create a common ground from which buyer and seller can quickly converge on a fair market value.
  • the TRRU suggested price is derived from a mathematical model that uses as its inputs actual market valuations being assigned to other technologies in the same sub-sector, the state of development of the technology, the cost anticipated in bringing the technology to market, and actual sub- sector investment-return variances. While the value of early-stage products can never actually be known, existing competing products, market conditions, and future revenue can all be assessed quantitatively to derive estimates of a reasonable price of each patent.
  • the variance, values, and cost of capital of other technologies in the same sector are in constant flux.
  • pl-x.com model inputs For pl-x.com model inputs, "pure play” companies whose value is entirely tied-up in a single product, are selected and tracked using the pl-x.com valuation algorithm for each market sector. The appropriateness of each such company chosen is monitored by the pl- x.com financial operations staff, and additions or deletions are made to each market sector when companies become diversified, get acquired, or cease developing a product .
  • Time until launch - t is defined as the number of months it would likely take a well-funded corporate entity to turn the patent in its present state of development into a product ready for launch.
  • the value of t for most listings on the license market ranges from 0 (an already-launched product) to 120 (ten years of development and testing needed before launch) .
  • Variance of valuations in the sector - s2 is the variance of value (ROD , as it functions mathematically in the Black-Scholes option pricing model, plotted against time for other "pure play” companies in the same sector as the listed patent. Variance is found at thirty second intervals through continuous regression analysis by the software embedded in the pl-x.com website.
  • Future value at launch - FV Like variance, future value is calculated and continuously recalculated as the mean market value of "pure play" companies, whose valuation in public markets is tied to a single product at the time of their launch. Like variance, FV can fluctuate from minute-to-minute, because although each of the five or six companies in a particular sector pass the point of their commercial launch only once, the trajectory their valuation is taking, and therefore their projected value at the time they launch, changes with every fluctuation in their stock price. 4.
  • Cost of Capital - r Like variance and FV, r is derived from a re-calculated mean of the cost of capital of the sector. This is equivalent to the mean trailing one-year return on investment for each of the pure-play companies being surveyed.
  • Option price - OP Since the technology being evaluated is treated as if it were a real option, the price of the "option” corresponds to the expenditure needed to "exercise” the technology - to develop it, test it, and bring it to market. This development cost, which in the case of medical patents consists mostly of clinical trial costs, is estimated by the pl- x.com valuation staff using a set of standardized tables, and shown to the listing seller before being entered into the patent database being evaluated.
  • the TRRU price is a value-added service to sellers seeking an independent valuation for the patent and an impartial value estimate that will give buyers piece- of-mind. These five variables are used to compute the suggested IP price according to Eq. 1 below:
  • the suggested IP price is displayed next to the patent (or other IP asset) listing on the license market portion of the exchange website.
  • Revenue potential the reason any buyer would be interested in buying, is a function of the number of potential customers (or patients, if the product is a medical device) of the product, and its ability to differentiate itself from currently available products. Differentiation over existing products tends to determine the degree to which a product will penetrate its market, as shown in Table 2 below:
  • Novel art/product/service with no regulatory precedence set .
  • composition-o -matter patents are clearly more valuable than narrow use patents, for example.
  • the presence or absence of competitors also affects competitive risks.
  • Table 4 shows some of the patent- realted considerations in competitive risk minimization.
  • Valuation of all listed technologies begins with the product's potential for eventually generating revenue, calculated in schedule A (Fig. 15A) .
  • Schedules B (Fig. 15B) , C (Fig. 15c) , and D (Fig. 15D) each produce inputs to the discount rate to be applied to output A, as shown in Eq. 2 below.
  • Schedule E (Fig. 15E) returns the value of upcoming trials that must be performed to make use of the technology.
  • variable "S, " the present fair value of the technology is based on revenue it is likely to generate, discounted by a rate determined by the risk of it becoming worthless, less the funds needed to develop it:
  • Schedule A Revenue potential
  • Each technology purchased or optioned has a potential for eventually generating cash for its owner in the form of product sales. This is the basis for its value. Companies often speak of the "market potential" of their products, which they define as the selling price of the product times the number of people who could potentially use it.
  • the exchange method for assessing revenue potential starts out the same way, by taking the prevalence of the disease treated by the product, multiplied by the therapy's predicted average selling price (ASP) , again multiplied by the number of times the therapy would be needed per year by a patient, and then by a "significance factor.”
  • ASP predicted average selling price
  • Output A is calculated using one of the following two formulae:
  • Fig. 15A Guidelines for choosing the product's significance factor, a measure of how much better the product is than the standard-of-care, are shown in Fig. 15A.
  • Schedule B Chance of proving safety and efficacy in trials
  • Schedule B quantifies the chance that the technology may fail to become a viable product during its interaction with Food and Drug Administration (FDA) .
  • FDA Food and Drug Administration
  • the FDA has complete and total regulatory authority over all pharmaceutical, biotechnology, and medical device products .
  • the chance that it will rule against allowing a product to be sold is a real and quantifiable risk, and is made part of the discount rate by Schedule B.
  • the FDA can deny marketing approval of a product for two distinct reasons: (1) Failure to be proved safe and (2) Failure to be proved effective.
  • Schedule B is composed of two sub-schedules to quantify safety and efficacy risk, Bl and B2, (Figs. 15B1 and 15B2) the outputs of which are multiplied to produce Factor B, as shown in Eq. 5 below.
  • Schedules C & D Quantifying competitive risk from new market entrants
  • Cost of trials remaining is defined as the predicted trial cost of running each trial necessary for FDA marketing approval, up to and including Phase III or "pivotal" trials. In the case of non-medical technology, this is analogous to the cost of completing the developmental work remaining on the product necessary to launch it (creating a working prototype, scaling up production, etc.) .
  • Trials generally cost between $2,000 and $9,000 per patient to run, modified by the number of centers, length of treatment, and stature of the investigators needed to make the trial convincing to the FDA.
  • the cost of trials remaining (Factor E) calculation begins with an estimation of the cost per patient, El, as shown in Fig. 15E1.
  • the second component of Factor E can be derived without a schedule.
  • E2 is equal to the total number of human patients in all remaining trials needed for market approval .
  • the final suggested listing price may be complicated by two additional factors: non-exclusivity and royalty splits.
  • Some sellers may wish to offer only non-exclusive rights to their patent, reserving the right to sell it again and again to other buyers. Such a decision clearly makes the technology less valuable to each buyer than it would be if exclusivity were offered.
  • Some sellers may wish to specify a royalty split, or a range of royalty splits, they are willing to agree to with a potential licensor. The percentage of eventual revenue being
  • the exchange valuation system deals with these two additional factors as "license price modifiers" - to be applied to the valuation just before listing. They are also both open to change by the listing party even after they are listed. Non-exclusivity decreases the value of a technology only to the extent that firms other than the buying firm exist that have the resources and inclination to license it in the future. For this reason, the suggested license price for a technology being listed non-exclusively is reduced by dividing it by an "industry competition factor, " defined in Schedule F (Fig. 15F) .
  • Non-Medical Schedule E Cost of development remaining Predicted development cost in non-medical technology, rather than being the result of patients required for each phase of clinical trials remaining, is linked to the human-hours worth of computer code, program "debugging," or similar time-consuming tasks standing in between the technology in its current state and the state it must be in by the time it is launched as a product .
  • Patent Risk Rating And patent Validity Insurance A patent refers to a bounded region of intellectual property. As intellectual property is to real property and as a patent is to a real property title, so is patent validity insurance to property title insurance. This mandatory insurance product helps reduce the buyer's risk, and is one of the risk transfer elements that the exchange provides to expedite patent sales and license transactions.
  • each patent will receive automatic validity insurance.
  • the availability of patent insurance creates a more risk-free marketplace by reducing the risk that buyers and sellers bear in each patent sale.
  • pl-x.com is also working to create a complete package of patent insurances including validity plus, infringement, and enforcement insurances to facilitate the safe and efficient commercial transfer of quality patents and licenses.
  • Patent validity insurance coverage will automatically cover every patent and license transaction closing on pl-x.com.
  • This innovative risk transfer product will enhance pl-x.com market liquidity because each pl-x.com patent buyer or licensee will be insured for the amount of the up- front purchase price paid for each patent and license.
  • Patent validity coverage indemnifies the buyer or licensee against the risk of financial loss that can arise when the purchased patent is declared invalid.
  • Invalidity could be declared, for example, if the inventor or patent applicant failed to disclose information in the patent application process or because of outright fraud, such as a fictitious patent or a patent offered for sale by someone other than its owner. Coverage can be provided for the buyers ⁇ purchase price or license fees, plus tooling costs and even for investment in developing the new product from the patent rights acquired. Additional Patent Insurance Products
  • a degree of trust and security between buyers and sellers is needed for any transaction to take place.
  • An entire industry has evolved that provides trust and security in real estate transactions - the third party escrow.
  • An escrow officer holds transaction documents from one party and the cash consideration from the other, deducts costs and fees, and, upon instructions from the parties, releases the documents and cash.
  • the patent market has a present, acute need for a neutral escrow service.
  • a business development executive at an orthopedic implant company in Tennessee to acquire a license for a bone growth protein from a bioengineering company in Finland
  • the Tennessee buyer must feel secure and confident that the cash wired to a Finnish bank or other financial intermediary will be appropriately handled and will result in the delivery of the bone protein patent.
  • the participants in international patent exchanges take the risk that local law and custom will protect their respective interests.
  • neither the American nor the Finnish party will be willing to learn the details of international contract law nor will they take the chances on the other party following through without some kind of third-party assurance.
  • the concept of hiring local legal representation is both expensive and potentially unreliable.
  • the patent escrow service is a third party intermediary which holds the consideration from Tennessee and the patent title from Finland, and disburses neither item to the opposite party until both have been received and verified. Furthermore, the patent escrow, in being impartial, is responsible for complying with the requirements of local law for such transfers and for the collection and payment of fees, costs and commissions. The patent escrow agent will operate under contract from the exchange, and will receive compensation for this service according to a fee schedule.
  • pl-x.com will provide on- line document management tools to help both parties manage the paperwork involved in each deal closing.
  • the tools enable both parties in the deal to talk in a secure on-line space, to edit and review password- protected documents, and to track the progress of deal documentation all in a paperless environment.
  • pl- x.com management believes that this service, originally designed for the financial community, will further reduce the time it takes to close technology transfer deals and will offer both parties increased control over the documents involved.
  • the exchange fills an unmet need for cost- effective after-market licensing administration. Many companies do not have a dedicated licensing department, adequate administrative budgets, or license and royalty compliance monitoring. Potential revenue is lost.
  • the exchange licensing administration service uses a powerful information technology network for processing, tracking, and reporting royalties. This service is executed in cooperation with the exchange escrow service. A patent buyer will respond to a royalty questionnaire which will be based on the transaction terms agreed to at closing and that were filed with the exchange escrow service. The questionnaire will be processed electronically, reviewed by the exchange staff for inconsistencies, and then forwarded to the seller for acceptance.
  • the buyer will immediately receive wire instructions to deposit the appropriate royalty into a special bank account maintained for the benefit of the exchange escrow service. Simultaneously, the escrow service is notified to expect the wire. The escrow service, in turn, immediately confirms receipt of the funds and is responsible for wiring the funds to the seller.
  • Financial Operations for The Options Market The options market, the second of the three the exchange patent markets, allows for trading in both call and put options, so long as market participants (companies or third-party hedgers) are willing to offer them. Different motivations for trading are expected to arise depending on who is buying and selling each type of option.
  • a patent call option is the contractual right to purchase a technology from its owner at a predetermined price before a set expiration date. Buying the technology for the predetermined price is referred to as “exercising” the option, and the “exercise price” tends to be similar to the price that would be charged for exclusively licensing the technology outright from the beginning. Owning an patent call option gives the assurance that no competitor will be able to buy or license the technology until the option either expires or is exercised.
  • a risk-averse corporate entity may want to purchase a call option before beginning experiments or clinical trials to see if the technology works. If the technology development is successful, the entity exercises its option and owns the patent license. If it fails to meet the entity's requirements, or if the entity's business changes during the development, the option is allowed to expire, having spent much less money than it would have had it bought or licensed the patent outright from the beginning.
  • the patent owner who issues "writes" the option also benefits: If the option buyer decides it likes the technology and exercises its option, the option writer receives the exercise price (normally equal to a comparable license fee if the technology were licensed outright from the beginning) plus the option price it collected when the option was written. If the buyer decides not to exercise the option, the writer keeps the option price it collected and it keeps 100% ownership of the patent, on which it can go on to offer another option to another market participant.
  • call option buyers corporate developers
  • call option writer Universality with patent lying fallow
  • the price of the put option is normally proportional to risk of failure of the technology. When the risk is very high, the put option price will approach the present value of the exercise price, (exercise price) /(l + risk free rate)". Similarly, the exercise price would be a function of the purchase price of the patent, and when the risk is very high would approach the future value of the purchase price,
  • a developer in need of cash who is working on a high-profile technology could offer minute fractions of a call option to the public. This can be done, whether the developer bought the call option from an patent option writer, or is creating the option from its own endogenous technology.
  • This kind of "patent option offering” is analogous to a public equity offering, only the company offering the patent equity is doing so with the understanding that it may decide to "go private" at some predetermined date several years in the future - buying back all the pieces of the call, at a premium, if the technology works out .
  • a third-party nay-sayer may have reason to buy a put option from a corporate developer who bought it from the original owner. Although the put option cannot be exercised without the patent, the third party nay-sayer may feel confident that the developer will fail at developing the technology, and therefore need to get the put option back in order to "put" the patent back to the original owner. In this case, the developer would be forced to buy the put option back from the third-party nay-sayer, at a free-floating price that would obviously be higher than the price the nay-sayer paid for it (but always lower than the exercise price) . The nay-sayer would therefore have won his "bet” and profited.
  • the nay-sayer buyer would want to know the exercise price of the option from the very beginning even though he can never exercise it, because this is the upper limit of his pay-back.
  • the exchange valuation staff determines and posts its quantitative valuation estimate of each listed option. The procedure for doing this is described in detail in the the exchange Technology
  • the "S" input into the Black Scholes option pricing model is, conveniently, also equal to the the exchange suggested price for purchasing the technology outright .
  • the exchange staff For each patent listing fed through the Discounted Revenue valuation, the exchange staff also provides an patent risk-level rating, referred to as the patent rating.
  • the suggested dollar value of each the exchange listing is mathematically highly influenced by the risk level of the technology listed. The risk level is accounted for by the discount rate in Eq. 8, (B * C * D) , raised to the power of n, the number of years remaining until launch (B * C * D) n .
  • the discount rate can range from 1.00 (for a product with no safety concerns, known efficacy, already commercially available, with a dominant composition-of -matter patent in an industry with no competitors and high barriers to entry) to as high as approximately 19.11 (for an early-stage technology more than five years away from launch with known competitors in a highly desirable industry, protected by a narrow patent, where previous trials have failed to prove efficacy and patients deaths have been reported) .
  • This discount rate is listed on the exchange, next to the suggested price for each technology, as an patent rating.
  • the patent rating intended in the same manner as the Moody' s ratings of corporate bonds, is meant to provide buyers with another tool with which to assess listed technologies.
  • the exchange search engines are also equipped to search specifically for technologies with a given patent rating range. A guide for interpreting the patent rating is shown in Fig. 16. Financial Operations for The Securitized Asset Cash Flows Market
  • Cash flows unit trading is the only example of the exchange transactions that are not currently occurring between buyers and sellers in off- exchange private negotiated deals. IP holders may bundle a group of technologies, "securitize" them into units, and lists these units, or options to own the units, on the cash flows exchange.
  • the suggested value for each listed cash flows unit is analogous to the book value typically listed for each REIT (Real Estate Investment Trust) unit in today' s REIT market .
  • REIT Real Estate Investment Trust
  • Each patent property bundled together in a particular cash flows is evaluated according to the methodology described above . The sum of these values is then divided by the number of shares outstanding in the cash flows.
  • This technology "book value" is then listed on the cash flows exchange next to each cash flows.
  • the actual bid and ask price for each cash flows is determined by supply and demand, just as the case with bulletin-board listed REITs. And, as with REITs, market price and book value are often disparate.
  • the posted book value of cash flows changes more frequently than the posted book value of REITs, since the exchange Financial Operations OPT algorithms constantly update the suggested price of all units of patent pertinent to each cash flows.
  • data For purposes of re-calibrating the exchange valuation coefficients, "data" consists of examples of real-world intellectual property transactions in which both the nature of the technology and the purchase price are disclosed. Such data is critical for continually refining our valuation model, as described above. Data for this purpose is continually generated by buyers and sellers and feed back into the exchange model. Prior to trading on the exchanges, however, data is to be tabulated from press releases, from trade publications that feature technology transfer deals, and from companies and research institutions themselves . Examples Of Industry Categories For Continuous Variance
  • the variance (sigma2) and future value at launch (FV) inputs into the exchange suggested list price calculation are derived from the exchange Pure-play database, which contains approximately 5-10 publicly traded "pure play" companies in each of 185 fields of technology.
  • Sigma2 for example, is the computed variance about the mean of the natural log of stock price returns of each of the 5-10 companies in the category in question.
  • FV is the mean market capitalization of the pure-plays at the time they launched or are projected to launch their lead product. Both values are calculated and re-calculated on a minute-by-minute basis by the exchange operating computer code during stock exchange trading hours .
  • the exchange auction web site supports the following functions.
  • Initial buyer/seller registration This step deals with issues relating to authentication of trading parties, exchange of cryptography keys, and the creation of a profile for each trader that reflects his/her interest in specific patent.
  • This second step includes describing the item being sold or acquired and setting up the rules of the auction.
  • the auction rules explain the type of auction being conducted (open cry, sealed bid, Dutch) , parameters negotiated (price, delivery dates, terms of payment, etc.), starting date and time of the auction, auction closing rules, etc.
  • the bidding step implements the bid control rules of the auction (minimum bid, bid increment, deposits required with bids) and for open cry auctions, notifies the participants when new high bids are submitted.
  • This step implements the auction closing rules and notifies the winners and losers of the auction.
  • Open cry auctions take the public meeting approach. In this approach the response to each bid, for example, a higher counter-bid by another party, or the decision to close the auction, happens in a short time, sometimes in few seconds. These auctions work allow prospective buyers to: participate in the auction at the same time; and feel comfortable making counter bids in a few seconds . Traditionally such auctions are conducted with all participants present at the same location such as meeting/auction room where inter-party communication is instantaneous. Remote participation by phone and through proxy (order bid) is limited. Sealed Bid
  • Sealed bid auctions are practiced when it is impractical for the bidders to prepare counter bids instantaneously. This could be because it takes time to prepare a counter bid, the prior bid information needed to prepare the counter bid, such as the prior bid, can not be disseminated to the other bidders instantaneously, or because the bidders are not available to participate in the auction at the same time.
  • single round sealed bid auction all bidders submit their bids by a deadline, and the bids are evaluated at this deadline.
  • multi round sealed bid auctions there is a deadline for each round of bids, and at that deadline either the auction is closed or a fresh round of bids is solicited by some new deadline.
  • Single and Multiple Round Sealed Bid Single round sealed bid auctions lack the competitive atmosphere (bidding frenzy) in open cry auctions which encourages the bidders to outbid their rivals. Multiple round sealed bid auctions recreate some of the intensity and interest of the open cry format, however, this auction can be held over an unlimited time period until the ask price is met.
  • Bulletin Board Bid Another bidding alternative is to use an electronic bulletin board approach. Information about the prior bids is published on the bulletin board, but new bids are not required in seconds . The bidders can monitor the bulletin board a few times a day for a few days, and they have a chance to offer counter-bids to the existing highest bid. This approach alleviates the communication latency and simultaneous participation requirement of the open cry auction, but retains its competitive nature. Control of Bids/Offers
  • the initiator of the auction or the exchange can either require the participants to submit bids or announce its own bids to see if there are participants willing to conduct trade at his bid price.
  • each successive bid is higher than the previous one .
  • the exchange auction master puts up the bids, he can either start with a high bid, perhaps at which no bidder is willing to trade, and lower the bid gradually until he has sufficient bidders to clear his inventory. This is the Dutch auction in real time. Alternatively he can start at a low bid, low enough at which there are more buyers than his inventory, and increase his bid until the number of buyers willing to buy his merchandise matches his inventory. Setting The Trading Price
  • the bidders with the highest bids get the patent being auctioned. But the price they pay could be the same as what they bid or lower.
  • Discriminative Auction also known as Yankee Auction
  • the bidders pay their actual bid amounts. When the bidders are repeat customers of the seller, dissatisfaction among the bidders who have to pay a higher price compared to other bidders is sometimes of concern. This is addressed by allowing the bidders with winning bids to pay the price paid by the winning bidder with the lowest bid.
  • the seller can specify the minimum starting bid.
  • the minimum bid is usually some fraction (70%) of the lowest winning bids averaged over a specified number of preceding auctions.
  • minimum bid increments are often enforced. The bid increment is roughly proportional to the current bid, i.e., they are smaller for lower bids and larger at higher bids.
  • Open cry auctions can finish by a posted closing time. Alternatively, the auctions can be kept open until new bids continue to arrive within some time interval of the preceding bid. One could also choose to close the auction if either of the above two conditions is met or only when both conditions are met. Dutch auctions could close at a pre specified time, when all the inventory has been sold, when the price has fallen to a pre specified level, or at some combination of these three conditions. This format is likely to be the winning formula for the exchange and its patent exchange.
  • All auctions will have some rule for evaluating bids. When an item is being sold in an auction, generally a higher bid would be better than a lower bid. But other factors such as terms of payment can factor in a comparison of two bids. For example, a bid requiring delivery of goods on a schedule convenient to the seller may be preferred over another bid that matches the first one in all respects but has a delivery schedule inconvenient to the seller.
  • Advance payment or payment on delivery may call for a higher valuation of the bid compared to a bid where payment is due within 90 days of delivery.
  • tie breaking rules are required. Preference may be given to bids that are for larger quantity, and in case of two bids specifying the same quantity preference could be given to the bid that arrived earlier. If the seller maintains a history of its auctions, it can give preference to the bidder with whom he had better business dealings in the past. Services Provided To Sellers And Bidders Reserve prices (hidden lower limit on price acceptable to seller) is one service that the the exchange can provide to the seller. Other high-value services will include a credit check and certification of all bidders, patent insurance to prevent against patent default, escrow and clearing services.
  • Order bid (bidding through the exchange provided proxy to a qualified Licensing Agent) is an important service that the exchange can provide to the bidders . Alerting registered bidder to upcoming auction events and hosting special auction events are other marketing services that help create an efficient marketplace. Security Considerations
  • Security mechanisms are needed to ensure that the site announcing the auction and its rules is not sabotaged by an outsider. This includes preventing unauthorized postings and alterations as well as preventing denial of service attacks. Cryptographic tools that prove that a particular auction notice was posted and accessible during a certain time period will be very useful.
  • the exchange bidding process allows the buyers to request specific payment or shipping terms, these terms and conditions will be treated as part of the bid.
  • the auction chart will display the offered terms and conditions along side the bids shown. Further, when creating the product description, the seller will specify the range of terms and conditions acceptable to him and indicate how they are factored in bid evaluation. Retraction of Auction and Bids
  • the seller may be allowed to stop or withdraw the auction or modify the rules.
  • the bidders will be allowed to withdraw or modify their bids.
  • Closing The Auction The auction close according to the closing rules specified. At this time, the winning bids can be treated as, and if needed translated to, traditional purchase orders. At the closing of the auction, the following additional activities need to take place. Notification
  • the exchange must communicate the results of the auction to the bidders .
  • some information will be made available publicly, some common information will be made available to all bidders, and some will be communicated only to bidders to whom it is relevant . Once again security and privacy tools are needed. Record Retention
  • the auction record is digitally signed by the exchange .
  • Embodiments described above illustrate but do not limit the invention.
  • the invention is not limited to any particular hardware/software used to implement the computer system of the present invention.
  • the seller maintains a high degree of control in closing the auction for the seller's intellectual property.
  • the seller designates the rules for selecting the auction winner.
  • rules may include highest cash price, highest royalty rate, highest bid within a specified time period, or some other parameter or combination of parameters determined exclusively by the seller.

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Abstract

L'invention concerne une bourse en ligne de brevets d'invention et de licences, qui permet à des bailleurs et à des preneurs potentiels de licence de brevet d'invention et d'autres droits de propriété intellectuelle de traiter de manière efficace et fiable des licences ou des contrats de cession de propriété intellectuelle. La bourse comprend trois marchés: un marché de licences, un marché d'options et un marché de flux de biens sécurisé. La bourse en ligne de brevets d'invention et de licences comporte une base de données complète des droits de propriété intellectuelle proposés à la bourse en vue de l'octroi de licences, y compris une estimation fiable de la valeur du marché de chaque bien de propriété intellectuelle inscrit à la bourse, un service de clôture de transactions, un service d'assurance de brevets d'invention et un service de mise en main tierce.
PCT/US2000/006846 1999-03-17 2000-03-15 Bourse en ligne de brevets d'invention et de licences WO2000055791A2 (fr)

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KR1020017011744A KR20020009579A (ko) 1999-03-17 2000-03-15 온라인을 통한 특허 및 라이센스 교환소의 동작방법 및시스템
AU37491/00A AU3749100A (en) 1999-03-17 2000-03-15 Online patent and license exchange
EP00916381A EP1252591A2 (fr) 1999-03-17 2000-03-15 Bourse en ligne de brevets d'invention et de licences

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US12484799P 1999-03-17 1999-03-17
US60/124,847 1999-03-17
US37161499A 1999-08-10 1999-08-10
US09/371,614 1999-08-10

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US7991052B2 (en) 1998-12-21 2011-08-02 Zin Stai Pte. In, Llc Variable general purpose compression for video images (ZLN)
US8170095B2 (en) 1998-12-21 2012-05-01 Zin Stai Pte. In, Llc Faster image processing
US8290034B2 (en) 1998-12-21 2012-10-16 Zin Stai Pte. In, Llc Video transmission and display including bit-wise sub-sampling video compression
US8068544B2 (en) 1998-12-21 2011-11-29 Zin Stai Pte. In, Llc Compression with doppler enhancement
US8537898B2 (en) 1998-12-21 2013-09-17 Zin Stai Pte. In, Llc Compression with doppler enhancement
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US7671864B2 (en) 2000-01-14 2010-03-02 Roman Kendyl A Faster image processing
US8595145B2 (en) 2000-05-03 2013-11-26 Shelton E. Harrison, Jr. Electronic bond and guaranty process and business method
GB2367156A (en) * 2000-09-23 2002-03-27 Rio Brand Ltd Online brand repository system and methods for submission thereto, searching thereof and management thereof
WO2002037304A3 (fr) * 2000-11-01 2003-08-14 Sap Ag Procede et systeme de gestion de la propriete intellectuelle
WO2002037304A2 (fr) * 2000-11-01 2002-05-10 Sap Aktiengesellschaft Procede et systeme de gestion de la propriete intellectuelle
DE10132814A1 (de) * 2001-07-06 2003-01-30 Siemens Ag Verfahren zur Anbahnung eines Verkaufs einer Schutzrechtsanmeldung oder eines Schutzrechtes
WO2003096245A1 (fr) * 2002-05-10 2003-11-20 Alps Electric Co., Ltd. Systeme et procede d'achat/de vente de droits de propriete intellectuelle, programme correspondant et support d'enregistrement
WO2003098508A1 (fr) * 2002-05-21 2003-11-27 Alps Electric Co., Ltd. Systeme et procede d'achat/vente de droits de propriete intellectuelle, programme correspondant, et support d'enregistrement
WO2004010357A1 (fr) * 2002-07-19 2004-01-29 Japan Industrial Technology Association Procede de transfert de technologie de recherche/developpement, programme et support d'enregistrement
WO2004012116A1 (fr) * 2002-07-30 2004-02-05 Alps Electric Co., Ltd. Systeme, procede et programme de cession/acquisition de droits de propriete intellectuelle et support d'enregistrement
WO2004017242A1 (fr) * 2002-08-16 2004-02-26 Alps Electric Co., Ltd. Systeme de vente/d'achat de droits de propriete intellectuelle et programme associe
WO2009029951A3 (fr) * 2007-08-31 2009-05-22 Music Mortgaging Inc Système et procédé de garantie de la propriété intellectuelle
WO2009029951A2 (fr) * 2007-08-31 2009-03-05 Music Mortgaging Inc. Système et procédé de garantie de la propriété intellectuelle
US20130325750A1 (en) * 2012-06-05 2013-12-05 Massively Parallel Technologies, Inc. System and method for an algorithm investment model
WO2016037263A1 (fr) * 2014-09-11 2016-03-17 9437169 Canada Inc. Procédé et système permettant d'effectuer des transactions de propriété intellectuelle

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WO2000055791A8 (fr) 2002-08-29
EP1252591A2 (fr) 2002-10-30
JP2000268111A (ja) 2000-09-29
KR20020009579A (ko) 2002-02-01

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