Method and system for facilitating the transfer of intellectual property

• US 8,700,476 B1
• Filed: 01/06/2009
• Issued: 04/15/2014
• Est. Priority Date: 03/20/2000
• Status: Active Grant

• Current Assignee: Patent Cloud, LLC
• Original Assignee: Patent Cloud, LLC
• Inventors: Pienkos, John Thaddeus
• Primary Examiner(s): ZURITA, JAMES H
• Application Number:
  US12/319,366
• Time in Patent Office: 1,925 Days
• Field of Search: 705/26, 705/27, 705/26.1, 705/27.1
• 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 system for facilitating an overall transfer of an interest in a patent asset between a first party and a second party by way of an intermediary, the system comprising:

a first computer system of the intermediary, the first computer system having a processor coupled to a memory, a user interface and at least one input/output device;

wherein the first computer system provides an interface by which the first computer system conducts web-based communications with at least one additional computer system selected from a group consisting of an intellectual property (IP) owner computer system, an IP desirer computer system, an IP exchange computer system and a service firm computer system, so that the first computer system;

(a) receives identification information from at least one of the first and second parties;

(b) obtains first information concerning the patent asset from communication with the at least one additional computer system, wherein the first information includes descriptive information of a technical subject matter of the patent asset and market information regarding a market to which the patent asset pertains;

(c) verifies at least one aspect of property rights of the first party in the patent asset; and

(d) at least partly assists, based on the technical subject matter and the market information included in the first information, in negotiating conditions for at least one of a first transfer of at least some of the first party'"'"'s property rights to the intermediary, wherein the at least some of the first party'"'"'s property rights become property rights of the intermediary, and a second transfer of at least some of the intermediary'"'"'s property rights to the second party,

whereby the first computer system at least partly assists in achieving the overall transfer including the first and second transfer.

2. The system of claim 1, wherein the first computer system of the intermediary performs at least one evaluation pertaining to the patent asset, wherein the evaluation relates to a market for products covered by the patent asset.

3. The system of claim 2, wherein the first computer system consults information included as part of the memory of the first computer system in determining whether there has been at least one past inquiry concerning the patent asset.

4. The system of claim 1, wherein the at least one evaluation is performed based at least in part based upon the obtained first information.

5. The system of claim 1, wherein the first computer system receives the identification information from each of the first and second parties, and at least partly assists in negotiating conditions for both the first transfer and the second transfer.

6. The system of claim 1, wherein the first computer system of the intermediary makes a determination regarding whether the patent asset is owned by or licensed to the intermediary in response to an inquiry received from the second party.

7. The system of claim 6, wherein the first computer system consults a database in making the determination regarding whether the patent asset is owned by or licensed to the intermediary.

8. The system of claim 1, wherein the first computer system of the intermediary includes a web server that hosts a website of the intermediary.

9. The system of claim 8, wherein the interface provided by the first computer system includes a graphical user interface (GUI) that provides a plurality of fields by which information can be entered.

10. The system of claim 1, wherein the first computer system of the intermediary is an intellectual property investment bank (IPIB) computer system, and wherein the at least one additional computer system includes both the intellectual property (IP) owner computer system of the first party and the IP desirer computer system of the second party.

11. The system of claim 1, wherein the memory of the first computer system of the intermediary includes at least one database that is capable of storing information received from the at least one additional computer system.

12. The system of claim 11, wherein the stored information relates to inquiries of a plurality of parties that have contacted the intermediary.

13. The system of claim 1, wherein the memory of the first computer system stores information concerning at least one of a plurality of IP assets, a plurality of IP desirers, a plurality of IP owners, a plurality of exchange entities and a plurality of service firms.

14. The system of claim 1, wherein the first computer system of the intermediary is configured for communication with a further computer system of an IP exchange entity.

15. The system of claim 14, wherein the first computer system of the intermediary interacts with the further computer system of the IP exchange entity by accessing a website hosted by an IP exchange web server of the further computer system.

16. The system of claim 15, wherein the first computer system of the intermediary communicates with the further computer system using software that allows for coordination of a website of the first computer system with the website hosted by the IP exchange web server of the further computer system.

17. The system of claim 14, wherein the first computer system of the intermediary accomplishes at least one of the first and second transfer by facilitating an interaction with the further computer system of the IP exchange entity, and wherein the first computer system of the intermediary allows a user of the first computer of the intermediary to access a website of the IP exchange entity.

18. The system of claim 1, wherein at least one of the following is true:

(1) the computer system of the intermediary is capable of providing an on-line questionnaire with one or more fields for entry of the identification information;

(2) the identification information includes at least one of a username and a password; and

(3) at least one of the first and second transfer involves a license with respect to the patent asset.

19. The system of claim 1, wherein the web-based communications involves at least one of a telephone line, a cable line, an optical fiber line, a wireless communication link, and a satellite communication link, wherein the user interface includes at least one of a computer terminal with a keypad, a touch screen, and a voice-actuated input/output system, and wherein the processor is at least one of a microprocessor, a microcontroller, a personal computer, a mainframe computer, and a supercomputer.

20. The system of claim 1, wherein the first computer system of the intermediary sends at least one of an offer and an acceptance for receipt by at least one of the first and second parties.

21. The system of claim 1, wherein the web-based communications involve the obtaining of both the first information concerning the patent asset, and also second information regarding particular rights to the patent asset that either the first party desires to transfer or the second party desires to receive.

22. The system of claim 1, wherein the first computer system obtains information regarding at least one of an indication of a desired time period and desired expiration date of a licensing arrangement;

an indication of a desired territorial restriction on a licensing arrangement;

an indication of whether there are limitations on sublicensing of the patent asset; and

indication of whether there is a use restriction in relation to licensing of the patent asset; and

an indication of a royalty rate pertinent to licensing of the patent asset.

23. The system of claim 1, wherein the first information includes at least one of a title, a number identifying the patent asset, a filing date, an issue date, and expiration information of the patent asset.

24. The system of claim 1, wherein the first information includes product information regarding a product that is within a scope of the patent asset.

25. The system of claim 1, wherein the first computer system of the intermediary performs at least one evaluation pertaining to the patent asset relating to a financial value of the patent asset.

26. The system of claim 1, wherein the first computer system of the intermediary performs at least one evaluation pertaining to the patent asset relating to a technological scope of the patent asset or a product coverage of the patent asset.

27. The system of claim 1, wherein the first computer system of the intermediary performs at least one evaluation pertaining to the patent asset relating to a product coverage of the patent asset.

28. The system of claim 1, wherein the first computer system of the intermediary performs at least one evaluation pertaining to the patent asset relating to whether there has been at least one past inquiry concerning the patent asset.