Although it’s clear that growth has occurred in the secondary market for patents, less attention has been paid to the fact that the secondary market is actually generating its own IP, with mixed implications for inventors and institutions, according to Aaron R. Feigelson, an IP attorney at the Chicago law firm Leydig, Voit & Mayer, Ltd, and author of the blog 12:01 Tuesday. At least 14 patents are directed to valuing or marketing IP, and 11 of these were issued in the last 30 months. The list, by patent number, includes:

• 7,493,262 – Method for valuing intellectual property
• 7,386,460 – System and method for developing and implementing intellectual property marketing
• 7,346,545 – Method and system for payment of intellectual property royalties by interposed sponsor on behalf of consumer over a telecommunications network
• 7,346,518 – System and method for determining the marketability of intellectual property assets
• 7,315-836 – Method for obtaining and allocating investment income based on the capitalization of intellectual property
• 7,292,994 – System and method for establishing value and financing of intellectual property
• 7,272,572 – Method and system for facilitating the transfer of intellectual property
• 7,269,566 – Method for obtaining and allocating investment income based on the capitalization of intellectual property
• 7,228,288 – Method of repeatedly securitizing intellectual property assets and facilitating investments therein
• 7,216,100 – Method for obtaining and allocating investment income based on the capitalization of intellectual property
• 7,188,069 – Method for valuing intellectual property
• 6,959,280 – Method of protecting against a change in value of intellectual property, and product providing such protection
• 6,330,547 – Method and apparatus for establishing and enhancing the creditworthiness of intellectual property
• 6,018,714 – Method of protecting against a change in value of intellectual property, and product providing such protection

The list excludes several other IP-related patents, such as those related to maintaining an inventory of IP assets, R&D, or patent prosecution, Feigelson adds. “These are just the ones I’m aware of that specifically target the patent transactional marketplace,” he writes. The irony is that, by patenting these methods, the secondary market in some ways becomes a primary market, since “the non-practicing entities who are often involved in the valuations and exchanges of IP covered by these patents may now actually be practicing entities with respect to some of those patents. The prospect that these IP-related patents may artificially limit a patent owner’s ability to valuate, market, and sell IP for fear of treading on a protected process runs counter to one of the underlying principles of the patent system – namely, the opportunity for an inventor to obtain value for his or her invention, he adds. “This is different from the situation when, for example, Hootman’s patent on a buggy whip lost value because of an industry improvement like, say, the automobile.” Instead, Feigelson notes, these patents don’t impact the value of an underlying invention for end users, yet a patent for an invention may be worth less because it cannot be sold at a particular kind of auction, securitized, or valuated in a certain way. “It’s as if the PTO jacked up issue fees by a few bucks, and diverted the difference to a handful of auction operators and fund managers,” Feigelson writes. “I’m all for at least some barriers to entry at the PTO. But it doesn’t feel quite right when the barrier is put up by a third party with the PTO’s blessing.”

Go to: 12:01 Tuesday

Posted April 22nd, 2009 under Tech Transfer

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