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Our History
Oso IP, LLC was founded by inventors and patent attorneys who started in this business monetizing their own inventions/patents, and who have been helping other patent holders do the same since the turn of the century, in the face of recent challenges.
The Challenges of the Modern Patent Market
Over Oso IP’s decades of experience, the patent market has seen its “darkest times” with an increased number of obstacles being erected by multiple branches of government at the urging of those parties who are often required to pay royalties under such patents. Specifically, both Congressional action [e.g. the American Invents Act (“AIA”), etc.] and Court decisions (e.g. eBay, Alice, etc.) have erected additional barriers [e.g. inter-partes reviews (“IPRs”), loss of injunction, reduced patent eligibility, etc.] that often prevent patent owners from reaping any returns, let alone maximum returns, on their protected inventions.
On top of that, after the above legal hurdles are overcome, the patent holder must convince a jury of the facts surrounding the same or similar legal arguments. Raising the stakes further, patent holders typically only have a limited number of “shots” (e.g. judgements) at getting to a favorable resolution during patent assertion, due to a variety of issues. As a first example of such issues, patent life (term) is limited (20 years from date of initial filing), which provides limits on the timeframe during which patents are useful. Secondly, legal issues such as “collateral estoppel” & ”issue preclusion” historically work to limit additional assertions so as to ensure that there are significant differences between different assertions. In other words, a patent holder cannot assert the same claims for the same invention multiple times. Finally, there are numerous practical ramifications (that weigh on any additional/follow-on assertions) after an initial assertion ends poorly (e.g. by an adverse Markman or summary judgement ruling, etc.). Just by way of example, after an initial loss, a patent holder may face additional headwinds involving: the existence of a lower-dollar comparable license, a negative judgment to work-around, keeping partner law firms/financiers interested and momentum flowing, etc.
Questioning Traditional Approaches
After experiencing the above issues through very challenging times in the patent market, and witnessing firsthand how traditional patent monetization (“PM”) approaches more frequently fail to overcome the aforementioned obstacles, Oso IP began to question the “status quo” with such traditional PM approaches, by asking the following questions.
Fact Re: Traditional Patent Monetization (“PM”) Approaches: A patent assertion is framed (i.e. defined) by the claims of the patents, and such claims (framing) largely dictates whether all necessary legal hurdles will be overcome, as required, to maximize returns. Surprisingly, patent holders typically spend only tens of thousands of dollars to secure their patent claims. For example, it is not uncommon for a patent attorney to spend a single day on an Office Action response.
Question: If a patent holder is forced to finance millions of dollars to assert a patent and nearly all of the arguments in such assertion will involve the claims themselves, why wouldn’t the same patent holder spend more than <1% of such budget on the claims that will actually frame any patent assertion to overcome all necessary legal hurdles?
Fact Re: Traditional PM Approaches: When a patent is asserted, infringer’s typically spend millions of dollars to: 1) identify “prior art” (to be used to challenge patent validity), 2) generate non-infringement positions and Markman constructions (i.e. claim interpretations) that support such positions (to challenge patent infringement), 3) urge the Court that the protected invention is not of a “type” that is qualified for patent protection (to challenge patent eligibility), 4) identify arguments why the patented invention is not valuable (to be used to challenge damages/royalty amounts), as well as other arguments, all in an effort to pay a patent holder nothing, or at least minimize any royalty payment.
Question: If an infringer is spending years and millions of dollars to make the above arguments during a patent assertion all in an effort to pay the patent holder nothing, why wouldn’t the patent holder spend at least a reasonable fraction of such amount to “predict” 1), 2), 3), 4), etc. above, for the purpose of better framing any patent enforcement action (through claim drafting) during patent prosecution, to optimize assertion results?
Answer: The simple answer to the above questions is that patent holders typically do not have the resources to bolster their case in such manner, and there are very few firms that invest at such early stages of patenting, before assertion is even contemplated. Further, while large corporations typically have countless patents in their portfolios and can achieve their desired leverage through the assertion of diverse patent families, smaller patent holders often do not have such advantage of scale.
Fact Re: Traditional PM Approaches: Most patent prosecutors draft hundreds of patent applications and thousands of claims for such applications, without ever having any of their claims tested in any patent assertion and, therefore, without any “feedback” on whether their claims deliver optimal returns.
Question: Why is it so hard to find patent prosecutors that have most of their patent claims tested in Court, so that they can improve their claim drafting skills and the efficacy of their claims?
Fact Re: Traditional PM Approaches: Nearly all patent prosecution firms charge for services on an hourly or fixed-fee basis, which limits their services according to the patent holder’s budget. Such pricing model reduces both the ability and incentive of prosecution firms to spend sufficient time framing a full-blown patent assertion when drafting claims.
Question: Why is it so hard to find patent prosecutors who are also willing to invest their time/money on a contingency basis?
Answer: Far less than 1% of granted patents are ever asserted to a point where District Court/Patent Office feedback is provided, which means that most patent prosecution attorneys do not receive feedback on their claims unless they primarily draft claims in the context of active patent assertion. Further, any return on investment in patent licensing can take years and is subject to significant risk, thus most patent prosecution attorneys work solely on a “cash-only” basis, as opposed to investing time and money in patent portfolios on contingency. This is especially the case in situations where a costly massive patent portfolio build-out is necessary to maximize value.
Oso IP’s business model directly addresses these challenging questions, to generate unparalleled results during patent licensing.