Emerging Enterprises Committee Webinar
How Valuable is Your Patent, Really?
Wed., June 21, 2017
12:00 - 1:00 p.m. (Eastern)
11:00 a.m. - 12:00 p.m. (Central)
10:00 - 11:00 a.m. (Mountain)
9:00 - 10:00 a.m. (Pacific)
With AIA, recent case law, and development of post-grant proceedings, patent valuation is in flux. How can inventors and IP professionals work together to determine whether IP protection is worth the expense, given the current patent environment? What can you do to ensure the patents you obtain will maintain its value for the duration of their terms and beyond?
This presentation is NOT a discussion of IP valuation methodology. We’ll look at various business, technology, and legal factors that influence the value of intellectual property, including recent case law examples, such as WARF v. Apple ((3:14-cv-00062, W.D. Wis.), Enfish v. Microsoft (2015-1244, C.D. Cal.), and other recent cases on evaluating patent portfolios in the near future. Does a small patent portfolio necessarily mean a weak valuation? How do you determine whether or not to pursue software patents? We'll discuss these and other specific questions to keep in mind and actions you can take in order to maximize the future value of IP portfolios.
Participants will learn:
- An understanding of the factors that influence the value of intellectual property in specific cases
- Recent case law that impact the valuation of IP
- Actions you can take to help ensure the lasting value of IP for your business
Throughout Yoriko Morita’s career of more than 20 years working with technology companies, she has often seen companies struggle to balance the needs of three competing interests:
- business (eg, allocating limited financial resources);
- technical (eg, developing an innovative marketable product); and
- legal (eg, risk mitigation and compliance).
Dr. Morita believes that these three interests can work together.
She specializes in creating and implementing practical action plans to ensure that a company’s business objectives align with its technology development and IP strategies. Using her vast experience, she is able to draft and prosecute patent applications, execute a comprehensive IP strategy and assist in the transaction of IP assets.
Dr. Morita understands the innovation lifecycle – from innovation, IP portfolio development and transactions to patent assertion and monetisation – because she has been responsible for all these activities in her previous roles. She has worked in a variety of settings, including start-ups, a NASDAQ-traded company, a federal laboratory, a non-profit organisation and a patent assertion entity. She speaks the language of business leaders, technologists and legal professionals, and can act as an interpreter for these groups to make sure that they are all working together to grow a company.
Dr. Morita has a PhD in electrical engineering (optics emphasis), an MBA and a BA in physics. She is also a Certified Licensing Professional and an experienced US-registered patent agent, and has been recognized as one of the world’s leading IP strategists, having been selected as one of IAM Strategy 300 for the past three years. She has native fluency in both English and Japanese, with extensive experience of working and negotiating in Asia.