We do a lot of mentoring and pro bono work with entrepreneurs, inventors, and investors, mainly in the computing and communications, consumer electronics, mobile, and the Internet of Things / Everything. We have also worked with litigators and trial attorneys on behalf of both plaintiffs and defendants.
Fee-for-service projects are always attractive, including equity and hybrid equity / cash compensation arrangements.
Patent Kinetics is willing to work on a risk-adjusted contingent fee basis. In lieu of hourly cash compensation, the specific contingency fee arrangements depend mainly on when we first get involved in a project, the projected time to money, and the project specifics. What follows are broad guidelines rather than strict rules.
When we get involved:
These are the three moments when patent owners and inventors typically begin a project with us:
Prior to filing any US patent applications: This is the moment of greatest flexibility and when we have the greatest opportunity to partner with patent owners, inventors, and patent attorneys to increase the likelihood of a favorable outcome. We may provide feedback regarding draft patent specifications and patent claims while helping the team assess how markets, products, and services might evolve in the future. Patent Kinetics may help the team then draft patent claims that may “read on” or describe future products or processes. We remain involved through patent issuance and monetization through sale, licensing, or our preferred outcome, enforcement. For these and related ongoing services, we get a Base percent (B%) of any eventual returns.
After a US utility patent application has been filed, but before the patent issues: Once a patent application has been filed, there is less flexibility to modify the specification and perhaps the patent claims themselves. This is because the utility specification with the earliest priority date is now fixed. Nevertheless, we can often add value by helping to craft continuing applications and patent claims that read on existing and possible future products and services, searching the patent and non-patent prior art, and by aiding in responses to PTO office actions. Post issuance, we can develop the business case for enforcement together with organizing and managing enforcement related activities. For these and other related ongoing services, we get our Base percentage plus 5% to 7.5% of any eventual returns.
After a US utility patent issues: Now the specification, claims, and prosecution history are fixed, including the prior art cited to the patent examiner at the PTO. The record is cast in concrete, so to speak. Overall risk is now substantially higher. In these circumstances, we typically add value by searching the patent and non-patent prior art so that we know what an enforcement target might find when they search. Using publicly available information, Patent Kinetics may also attempt to identify products or services in the marketplace that may be practicing the invention without a license, draft claim charts showing the relationship between the patent claims, the patent specification, and specific features of the product or service. We then develop the business case for enforcement together with organizing and managing enforcement and licensing related activities. For these and other related ongoing services, we get our Base percentage plus up to 10% more of any eventual returns.
Typical Process
The typical first step in creating a possible working relationship is to put in place a mutual confidentiality agreement that protects the interests of the prospective client. Then after getting to know the people, technologies,and goals of a possible project, we provide a draft a binding term sheet agreement customized to circumstances. The binding term sheet agreement will typically provide a period for due diligence. The agreement further provides high level descriptions of project scope, responsibilities, overall objectives, and expected timing. The agreement also documents how any eventual proceeds are to be shared among stakeholders.
Contacting Patent Kinetics
We welcome inquiries. See our Contact Page for further information.
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