Chris Agrawal is President of the Association of Intellectual Property Firms and partner at Bookoff McAndrews. He was instrumental in one of the biggest patent transactions in history and the reason Eli got into patent law in the first place. If you’re a startup founder or an executive at a growth stage company worrying about patent protection or wondering how to scale your patent program, download and listen to this episode today.
On how AIPF helped IP firms navigate the pandemic:
“I was really thankful to have the association because we were all talking with each other and sharing information about what we were doing. And so it was really helpful as the pandemic was hitting - in late February and early March of 2020 - [to be] talking to each other about what we were seeing internationally from our clients, from other firms.”
Learn how Chris approaches building a valuable portfolio of patents:
“The first place I start is looking at the business. What does the business look like today? And what do they need first and foremost? And then from there, start looking at more of the nice to haves. Is there something else where there's real revenue, but it's really not connected to our business? Where can we turn the portfolio itself into an asset separate from our business?”
How he thinks about monetizing valuable patents:
“In general, you start to map out the market. The first place you look at with any deal is who are the infringers? What does the market look like for these claims? Who needs the claims? Who's practising the claims? And what does that market look like? Who are the big players? And also, who is in need of a portfolio like this?”
Finding the right balance for the client relying on outside counsel:
“There's this kind of dance that will happen at certain points in prosecution with an examiner where you have to kind of really quickly make some decisions on the fly about what deals to make with an examiner . . .how to change scope here and there a little bit. I think ideally you want to empower your outside counsel to be able to have a little bit of leeway with examiners so that, so that that dance can happen.
I think it's really powerful if you can empower your counsel to do that.”
For all this and more, don’t miss Chris Agrawal on this week’s episode of Clause 8.
On today’s podcast:
Links:
Clause 8: IBM's Chief Patent Counsel for Americas Mark Vallone on Changing Patent Portfolio Strategy
Clause 8: Chief Counsel John Lee on Bicameral, Bipartisan Efforts to Advance Section 101 & PTAB Legislation
Europe's New Unified Patent Court: Exclusive Interview with Judge Michael Fleuchaus
Resetting the Narrative on IP Rights in America
Matteo Sabattini on Licensing Igniting Virtuous Cycle of Innovation
Ed Murgitroyd on Disrupting IP Legal Services & Lessons from his Dad
Ofinno: The Little SEP Engine That Could
Kfir Luzzatto: Bring Amit Soussana Home
Time to Embrace Patent Eligibility Restoration Act (PERA) & AI Future
Exclusive Interview with Judge Pauline Newman’s Attorney Greg Dolin
SPECIAL EP: If Twitter Sues…with Gaston Kroub
Ex-USPTO GC Nick Matich on Rulemaking & the PTAB
Shawn Lillemo on Building Software Tools for a Patent Firm
New Episodes Coming Soon
Joff Wild on Founding IAM for Chief IP Officers & EU Commission’s anti-SEP Crusade
Tom Irving on Litigating 1st Hatch-Waxman Case & Mentoring 1000s in Patent Field
Tim Pohlmann on Founding IPlytics & Hosting The SEP Couch
HTIA’s David Jones on Winning in DC
Commissioner Stoll on Being Part of ‘First Family’ of Patent Law
World’s #1 IP Dealmaker You Haven't Heard of...Yet
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