What has been your career highlight to date, and what makes it stand out?

Having my two sons join the company. They have technical degrees and the IP experience to be contributors and thought leaders who will help drive the company in new and creative directions.

Patent pools are rapidly expanding into new verticals. At a time of such change, what are the greatest risks and opportunities that potential licensees should be aware of?

One risk is inclusion of non-essential patents; some may be low quality or non-essential to the industry. In terms of opportunities:

• reduced litigation and transaction costs;
• companies can license a broad range of technologies with a single agreement, reducing administrative burdens of negotiating multiple individual licences;
• pools can help minimise risk of infringement litigation as they provide a framework for resolving patent disputes amicably, which is particularly valuable in industries with complex, overlapping patent landscapes;
• pools can help licensees access global markets more effectively since a well-structured pool can appeal to international licensees without individual negotiations in multiple jurisdictions; and
• by licensing a broad set of patents through a pool, companies reduce the risk of being sued individually by patent holders, which helps foster greater confidence in adopting new technologies.

What makes a world-class monetisation strategy, and how do you measure its success? 

Fair and equitable results for both parties. In terms of comprehensive patent portfolio management, each patent’s quality and strategic relevance are critical. World-class strategies focus on patents that provide a competitive advantage through unique technologies or blocking competitors. This takes a highly integrated team of technologists, prosecutors and lawyers. Further, a process for tracking patent expirations, maintaining renewals for valuable patents and identifying new opportunities in the technology landscape is crucial.

On the market intelligence front, a deep understanding of current and future market trends is critical to monetising patents effectively. This includes assessing emerging technologies, competitive landscapes and potential patent infringement or licensing areas. Regularly mapping the landscape for key competitors and areas of potential infringement is also vital, offering insight into licensing opportunities and risk mitigation strategies.

A global strategy is key – securing patent protection in multiple jurisdictions ensures a broader field of licensing, enforcement and defensive use opportunities.

Engaging in patent pools or standard-setting organisations can be an effective way to monetise patents and offer additional protection.

Further, knowledgeable patent attorneys who can assist in drafting clear, enforceable licensing agreements and handle patent disputes are essential, and technologists must be an integral part of the team. Patent attorneys can benefit from a subject-matter expert’s deep technical knowledge.

Finally, fairness. A successful monetisation programme can be designed to consider the licensee’s concerns upfront. This approach is much more time consuming. Technologists on the licensing team can develop robust descriptors of the technologies in the portfolio to help the licensee understand the benefits of being permitted to use them.

What are the key risks that a party looking to prosecute a patent in the United States must watch out for? 

Observability and detectability – not enough attention is paid to this. It may make more sense to keep an invention as a trade secret.

It is also critical to have subject-matter experts involved in the prosecution process. There are many talented and knowledgeable patent prosecutors, but they are not subject-matter experts.

Finally, patents should be forward looking. Any given technology will have evolved in the time it takes to get a patent through the patent office.

When it comes to the use of commercially available patent-mining tools, Strategic IP Initiatives (SIPI) has expressed concern over “the transparency of how data sets are generated”. What are the key issues that need to be addressed here, and how would you go about combatting them?

Every project that SIPI takes on is extremely sensitive. Our company is involved in offensive and defensive licensing programmes and strategic prosecution. Data security is critical. Several of the commercially available tools that we have evaluated have off-site or offshore servers with unknown security environments. The internal security protocols may also allow company employees access to server data to ‘enhance’ and ‘maintain’ their products. This is unacceptable in our environment. Our data must be maintained in a secure multifactor authentication enclave, with access maintained and authorised by SIPI. Also, we require the latest security monitoring tools that cover code-level traces, metrics, logs and metadata. These concerns are part of the reason why we have had to develop our own internal patent-mining tools. 

Bruce Hollibaugh

Chief Executive Officer
[email protected]

Bruce Hollibaugh is the CEO and founder of Strategic IP Initiatives (SIPI), a leading patent analysis, strategic prosecution and reverse-engineering firm. Before founding SIPI, he was executive vice president of two reverse-engineering firms. Mr Hollibaugh has spoken at several leading IP conferences on patent mining, reverse engineering and patent licensing. He received a bachelor’s degree in business administration from Texas State University. Mr Hollibaugh is also a licensed pilot, musician and avid motorcyclist.