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Events

Speaking Engagement

AIPPI Japan Seminar

Friday, July 21, 2017 - Friday, July 21, 2017
1:30 pm Tokyo - 5:00 pm Tokyo
Tokyo

Paul Hastings will be participating in a panel discussion during the AIPPI Japan Seminar on Friday July 21st from 1:30 - 5:00pm regarding:

"Innovative approaches to generating multiple new revenue opportunities from existing patent portfolios 2017, especially in light of the significant increase in litigation funding sources in the United States."

Description:

To date, many players have developed conventional means of monetizing and licensing patents: contingency-fee law firms; sale of patents to non-practicing entities; enforcing corporate patent assets at its own risk and cost.  These conventional ways of licensing and enforcement have significant potential drawbacks.  Leading international law firm Paul Hastings LLP has developed a wholly new and creative approach to generating royalty revenues from Japanese companies’ patent assets.  This type of strategic program was not available until very recently, when changes to the law and a proliferation of funding companies has created beneficial partnership opportunities that simple could not have existed a few years ago.  The potential benefits from this program have been further enhanced by political trade policies of the current U.S. administration, an increase in section 337 filings at the ITC, and more focused venue rules after TC Heartland.  Paul Hastings attorneys will discuss current trends in patent litigation and related licensing in the US and share their unique and effective strategies for how to potentially generate significant revenue for companies with large patent portfolios.  The phrase “Rembrandts in the Attic” has had significant meaning in U.S. patent lore for many years and this program suggests creative methods for monetizing those treasures.

The topics covered will include:

  • How have Japanese companies traditionally sought to enforce patents in U.S. jurisdictions.

  • Successful patent monetization strategies, including real world examples.

  • What is litigation funding and why the current terms of funding deals are increasingly beneficial to large companies with patent portfolios.

  • How can companies use litigation funding to create a portfolio approach of monetization opportunities and integrate funding into existing monetization strategies.

  • A unique program marrying litigation funder’s increased interest in investing in monetization opportunities while ensuring our clients’ independence and success in generating multiple new revenue streams.

  • Novel and unique strategies for patent asset selection -- secrets to choosing the best assets to generate revenue.

  • Strategies relating to enforcement within multiple vertical industry groups – the portfolio approach to monetization.

  • Discussion of key concerns of companies considering portfolio funding (e.g., what can we do about potential counter-suit?). 

  • Venues for monetization: 337 actions at the ITC, the Trump administration, and other venue considerations and strategy after TC Heartland.

  • Taking advantage of these strategies to stay ahead of your competition while also being mindful of changes to the law brought about by key recent decisions such as TC Heartland and Lexmark.

Speakers:Yar Chaikovsky, Global Co-Chair IP Practice Group, Palo Alto OfficeHiro Hagiwara, Lead IP Partner, Tokyo OfficeBlair Jacobs, Lead IP Partner, Washington DC OfficeJoe Palys, Litigation Partner, Washington DC Office

Event Location:K.I.T. Toranomon Graduate SchoolLecture Room 1301Atago Toyo Building 13F1-3-4 Atago, Minato-ku, Tokyo 105-00002Japan


Practice Areas


Contributors

Image: Hiroyuki Hagiwara
Hiroyuki Hagiwara
Partner, Litigation Department
Image: Joseph E Palys
Joseph E Palys
Partner, Litigation Department
Image: Blair M. Jacobs
Blair M. Jacobs
Partner, Litigation Department
Image: Yar R. Chaikovsky
Yar R. Chaikovsky
Partner, Litigation Department