Method and system for facilitating the transfer of intellectual property

• US 7,272,572 B1
• Filed: 11/28/2000
• Issued: 09/18/2007
• Est. Priority Date: 03/20/2000
• Status: Expired due to Term

• Current Assignee: Google LLC (Alphabet Inc.)
• Original Assignee: Innovaport LLC (f/k/a PatentBank LLC)
• Inventors: Pienkos, John Thaddeus
• Primary Examiner(s): ZURITA, JAMES H
• Application Number:
  US09/724,744
• Time in Patent Office: 2,485 Days
• Field of Search: 705/59, 705/35, 705/51, 705/37, 705 26- 27, 705/57, 705/80, 705/22, 705 28- 29, 709/200
• US Class Current: 705/26.1
• CPC Class Codes: G06Q 30/00 Commerce
• CPC Class Codes: G06Q 30/0601 Electronic shopping [e-shopping]
• CPC Class Codes: G06Q 40/00 Finance; Insurance; Tax strategies; Processing of corporate or income taxes
• CPC Class Codes: G06Q 50/184 Intellectual property management

Abstract

A method and system for facilitating the transfer of intellectual property are disclosed. In one embodiment, the method of facilitating the transfer of intellectual property includes obtaining at a computer system of a first entity information concerning intellectual property in which an interest is available for transfer (the “available intellectual property”) from a second entity. The method further includes transferring the interest in the available intellectual property by concluding an agreement between the first and second entities. The agreement is representative of an acceptance of an offer concerning the transferring of the interest in the available intellectual property and consideration for the transferring of the interest. At least a portion of the interest in the available intellectual property that is transferred to the first entity is intended to be transferred from the first entity to a third entity.

Claims

1. A method of facilitating an overall transfer of at least one property interest in a patent asset between first and second parties by way of the web, the method comprising:

(a) providing an interface by way of a computer system of an intermediary by which at least one of the first and second parties communicates with the intermediary;

(b) receiving identification information from at least one of the first and second parties;

(c) obtaining first information concerning the patent asset, wherein the first information includes at least one of a number identifying the patent asset, a filing date, an issue date, expiration information, descriptive information concerning a technical subject matter of the patent asset, product information regarding a product that is within a scope of the patent asset, and market information regarding a market to which the patent asset pertains;

(d) verifying at least one aspect of property rights of the first party in the patent asset;

(e) performing at least one evaluation, wherein the evaluation relates to at least one of a financial value of the patent asset, a technological scope of the patent asset, a product coverage of the patent asset, a market for products covered by the patent asset, and whether there has been at least one past inquiry concerning the patent asset;

(f) negotiating conditions for transfer of at least some of the first party'"'"'s property rights;

(g) transferring the at least some of the first party'"'"'s property rights to the intermediary based on an agreement resulting from the negotiating of (f), whereby the at least some of the first party'"'"'s property rights become property rights of the intermediary;

(h) negotiating conditions for transfer of at least some of the intermediary'"'"'s property rights; and

(i) transferring the at least some of the intermediary'"'"'s property rights to the second party based on an agreement resulting from the negotiating of (h).

2. The method of claim 1, wherein each of the first and second parties is a corporate entity, and wherein the patent asset includes at least one of a patent and a pending patent application.

3. The method of claim 1, wherein the at least one aspect that is verified in (d) is selected from the group consisting of an ownership status and a validity status of the patent asset.

4. The method of claim 1, wherein the conditions for transfer in (f) include at least one of a price, a royalty rate, another payment indication, and a condition identifying which of the first party'"'"'s property rights are to be transferred, and

wherein the conditions for transfer in (h) include at least one of a price, a royalty rate, another payment indication, and a condition identifying which of the intermediary'"'"'s property rights are to be transferred.

5. The method of claim 4, wherein the at least some of the first party'"'"'s property rights that are transferred include at least one of a full assignment and a first license, and wherein the at least some of the intermediary'"'"'s property rights that are transferred include at least one of a full assignment, the first license and a second license, and wherein each assignment and license includes a respective set of associated property rights.

6. The method of claim 5, wherein each license is selected from the group consisting of an exclusive license, a nonexclusive license, a license of limited duration in time, a license that is limited to a geographical region, a license in which there are limitations on sublicensing, a license in which sublicensing is authorized, a sublicense, and a license including a field of use restriction.

7. The method of claim 1, further comprising at least one of:

prior to (f), obtaining additional information regarding an extent of the first party'"'"'s patent rights that the first party is interested in transferring to the intermediary; and

,

prior to (h), obtaining further information regarding an extent of the intermediary'"'"'s patent rights that the second party is interested in having transferred from the intermediary.

8. The method of claim 1, wherein the interface includes at least one field for receiving input information, wherein at least a portion of at least one of the identification information, the first information, the conditions for transfer in (f), the conditions for transfer in (h), the agreement of (g), and the agreement of (i) is received by way of the at least one field of the interface via an internet-type network.

9. The method of claim 8, wherein the computer system of the intermediary includes a server hosting a website, and

wherein the website hosted by the server provides a plurality of web pages that form at least a portion of the interface.

10. The method of claim 1, wherein at least one of the following is true:

at least a portion of at least one of the identification information, the first information, the conditions for transfer in (f), the conditions for transfer in (h), the agreement of (g), and the agreement of (i) is obtained by the intermediary by at least one of prompting a user to answer a question, providing a selectable item, and providing an open entry space into which the user can provide a submission, and

wherein the intermediary receives username and password information from the first and second parties by way of the interface.

11. The method of claim 1, wherein the intermediary is an investment bank for which facilitating intellectual property transfers is a primary business purpose, and wherein the intermediary facilitates at least one additional transfer of at least one additional property interest in at least one additional patent asset between at least one additional first party and at least one additional second party.

12. The method of claim 1, wherein at least one of following is performed by way of the computer system of the intermediary:

the verifying of the at least one aspect of the property rights;

the evaluation;

preparing of the agreement resulting from the negotiating of (f); and

preparing of the agreement resulting from the negotiating of (h).

13. The method of claim 1, wherein at least some of (a)-(i) are performed by at least one human being and do not involve the web.

14. The method of claim 13, wherein the evaluation is performed at least in part by an employee of the intermediary, and wherein the intermediary is in communication with at least one of the first and second parties by way of at least one email message.

15. The method of claim 1, wherein the intermediary interacts with an exchange entity to at least one of browse information available at the exchange entity, and retrieve information from the exchange entity, place a first bid in relation to the exchange entity, and respond to a second bid communicated via the exchange entity.

16. The method of claim 15, wherein the computer system of the intermediary is in communication with an additional computer system of the exchange entity, and

wherein the computer system of the intermediary employs software facilitating interactions with the additional computer system of the exchange entity.

17. The method of claim 1, further comprising at least one of;

(i) comparing at least one of the technological scope of the patent asset, the product coverage of the patent asset, and the market for products covered by the patent asset with additional information received from a plurality of parties concerning needs of those parties relating to patent rights;

(ii) comparing a first description of a need of at least one additional party relating to patent rights with further information received from a plurality of further parties concerning patent assets available for transfer from those parties; and

(iii) consulting at least one of a public database and a private database to identify an owner of a desired patent asset and, upon identifying the owner, contacting the owner.

18. A method of facilitating an overall transfer of at least one property interest in a patent asset between first and second parties by way of the Web, the first and second parties each being a respective corporate entity, the method comprising:

(a) providing an interface by way of a computer system of an intermediary by which at least one of the first and second parties can communicate with the intermediary;

b) receiving identification information from at least one of the first and second parties by way of at least one of the web, the internet, a mail delivery, a telephone connection and another communication linkage;

(c) obtaining first information concerning the patent asset, wherein the first information includes at least one of a number identifying the patent asset, a filing date, an issue date, expiration information, descriptive information concerning a technical subject matter of the patent asset, product information regarding a product that is within a scope of the patent asset, and market information regarding a market to which the patent asset pertains;

(d) verifying at least one aspect of property rights of the first party in the patent asset, wherein the verifying includes checking an ownership status of the patent asset;

(e) performing at least one evaluation, wherein the evaluation relates to at least one of a financial value of the patent asset, a technological scope of the patent asset, a product coverage of the patent asset, a market for products covered by the patent asset, and whether there has been at least one past inquiry concerning the patent asset, the evaluation being performed at least in part by an employee of the intermediary;

(f) negotiating conditions for transfer of at least some of the first party'"'"'s property rights;

(g) transferring the at least some of the first party'"'"'s property rights to the intermediary based on an agreement resulting from the negotiating of (f), whereby the at least some of the first party'"'"'s property rights become property rights of the intermediary;

(h) negotiating conditions for transfer of at least some of the intermediary'"'"'s property rights; and

(i) transferring the at least some of the intermediary'"'"'s property rights to the second party based on an agreement resulting from the negotiating of (h).

19. The method of claim 18, wherein the intermediary is an investment bank for which facilitating intellectual property transfers is a primary business purpose, wherein at least some of (a)-(i) in addition to (e) are performed by at least one human being, and wherein the conditions for transfer in (f) include a requirement to transfer at least one of an assignment of the patent asset and a license to the patent asset.

20. A method of facilitating an overall transfer of at least one property interest in a patent asset between first and second parties by way of the web, the first and second parties each being a respective corporate entity, the method comprising:

(a) providing an interface by way of a computer system of an intermediary by which at least one of the first and second parties can communicate with the intermediary;

b) receiving identification information from at least one of the first and second parties;

(c) obtaining first information concerning the patent asset, wherein the first information includes at least one of a number identifying the patent asset, a filing date, an issue date, expiration information, descriptive information concerning a technical subject matter of the patent asset, product information regarding a product that is within a scope of the patent asset, and market information regarding a market to which the patent asset pertains;

(d) verifying at least one aspect of property rights of the first party in the patent asset;

(e) performing at least one evaluation, wherein the evaluation relates to at least one of a financial value of the patent asset, a technological scope of the patent asset, a product coverage of the patent asset, a market for products covered by the patent asset, and whether there has been at least one past inquiry concerning the patent asset;

(f) negotiating conditions for transfer of at least some of the first party'"'"'s property rights;

(g) transferring the at least some of the first party'"'"'s property rights to the intermediary based on an agreement resulting from the negotiating of (f), whereby the at least some of the first party'"'"'s property rights become property rights of the intermediary;

(h) negotiating conditions for transfer of at least some of the intermediary'"'"'s property rights; and

(i) transferring the at least some of the intermediary'"'"'s property rights to the second party based on an agreement resulting from the negotiating of (h),

wherein the transferring in at least one of (g) and (i) occurs by way of an additional exchange entity with which the intermediary interacts, and

wherein at least one of (a)-(i) is performed at least in part by way of an employee of the intermediary.