Part I of this 2 part series covered a discussion with Matthew Rappaport,
founder of IPCheckups, a patent analytics firm which is looking to uncover
the super secretive patent portfolio of Intellectual Ventures, a company
which may be the largest patent holder company in the world.
After speaking with Matthew, I got in touch with Nicholas Gibson,
International Marketing Director of Intellectual Ventures. Specifically
regarding the IPCheckups project, he gave the company's official statement.
However he was more than happy to answer more 'broad' based questions
regarding the functioning of Intellectual Ventures. I present it as follows:
The company's official statement in response to the IPCheckup's IV project:
IV's patent holdings have been the source of fascination for many years. We
and many other patent holders believe that patents should be respected
regardless of who owns them. Those interested in viewing granted patents
and patent applications can search the USPTO's public database.
Ultimately, we hope to see the day when invention rights are respected
whether they are owned by individuals, universities, Fortune 500 companies,
start-ups or invention investment firms like Intellectual Ventures.
Swaraj: Your website mentions that you have 40,000 patents and are growing.
How does one find out if they may be infringing / want to license any of
these patents? Does such a party have to disclose any of their own
information to IV in order to find out about this?
IV: Any company selling a technology and wanting to try and check if the
product is infringing someone else's patents, need only go to the USPTO (or
corresponding websites for the Japan Patent Office, Chinese Patent Office,
etc.) and look up patents and publicly available patent applications that
fall in the same technology category and class. When they are doing their
search for prior art and pre-existing patents in particular fields, they
should be looking for the technology represented in the patents, not for
who own the particular technology. If IV happens to own one of the patents
they discover, by all means please come and talk to us about taking out a
In some situations, IV approaches certain companies when we believe that
their technology may be infringing one or more patents that we own. Our
hope is always to resolve these types of situations amicably, and we are
happy to say that we are usually able to resolve these in such an amicable
We would consider taking enquiries from any company that wanted to "check"
with IV to see if they were perhaps infringing one of our patents. However,
as you suggest, we strongly urge any such companies not to share
confidential information with us. If the discussion was serious and there
seemed to be a way that we could help, we would want to enter in to a
non-disclosure agreement in order to protect the rights of both IV and the
company with the technology in question.
Swaraj: Is there any specific purpose behind selecting certain sectors to
trade patents in? How do you choose the sectors in which you trade patents
IV: We invent and build patent portfolios in areas that we think will be
important technological areas for the world in coming years. This means
areas that have both technological importance AND a potential market
potential. We have a wide range of interests, but we do not invent in every
areas of technology. For example, we generally do not invent in areas
traditionally the realm of pharmaceutical companies. We are making
investment decisions in a wide range of technology areas, much as a venture
capitalist does. And similar to a venture capitalist, we understand that
not every single one of the areas we are investing in will turn out to be
profitable for us. But that is why we maintain a portfolio at scale with
diversity- this is a form of investment risk management.
We also have a program called Global Good, which invents technology to
solve problems in the poorest parts of the world. Global Good applies the
same expertise and resources used in our commercial effort, but focuses on
saving lives in the developing world rather than generating profit. For
example, the effort includes inventions for malaria prevention, detection
and eradication as well as a device to improve vaccination campaigns. More
details are available at
Swaraj: There's a lot of talk regarding IV using shell companies. Does IV
have any statement about this?
IV: The fact that we use shell companies has generated a great amount of
interest, which surprises us. We neither pioneered the use of shell
companies to manage our intellectual property assets, not are we as
prolific in the use of this tool as many people would like to believe. Our
use of so called shell companies has primarily been a tool we use for
accounting purposes to help organize the assets we purchase. However, our
president Adriane Brown has previously commented that this tool is
something that we have been and are moving away from.
Swaraj: Is there anything that you can reveal regarding what IV see as a
plan for growth ahead?
IV: IV will continue to invest in new inventions from outside inventors
around the world, we will continue to invent on our own. We will also
continue to purchase the most valuable patents from others, when it makes
sense for our business strategy. This is what we have already been doing
for years and we will continue to execute on our business model. We are
happy to say that more and more companies are working with us to gain
access to the inventions and invention rights they need. Further, more
city, state, and national governments around the world seek our advice on
building their own long-term intellectual property strategies.
Swaraj: How much of the patent portfolio is created by the in house
invention lab, and how much outside? Does the in house lab focus on any
IV: Our in-house invention effort files roughly 500 patent applications per
year and has been granted more than 700 patents since we began inventing in
2003 (the remainder are still in the application process....as you well
know, the US patent office can sometimes take quite a long time to issue
patents). These ideas are generated through invention sessions with our
team of 120 elite senior inventors. The lab is actually a separate entity,
which works on our inventions when they need additional research or
prototyping to prove their viability for commercial or humanitarian use. As
one example, our in-house invention team invented a new type of
metamaterials-based satellite antenna for broadband access, which the lab
then refined and prototyped to prove that the technology could work as a
commercial product. That project was then spun out as a separate company
(KymetaCorp.com) to commercialize this new antenna technology. Spin-out
companies like Kymeta and TerraPower
(http://www.terrapower.com/home.aspx)are one way to monetize our portfolio,
but our primary focus is on licensing.
As you know, even after applying to the USPTO (for example), patents can
take anywhere from 3 to 5 years to issue and so thousands of our patent
applications are currently pending. However purchasing an already existing
patent immediately places that asset within our portfolio where we can
quickly make it available to our customers. Currently, the majority of our
portfolio, therefore, consists of patents that we have purchased from
others (leading Fortune 500 companies, the world's best universities,
start-ups, and individual inventors).
I would like to thank both IPCheckups and Intellectual Ventures for
speaking with us and sharing their views.
SpicyIP has always favoured transparency, and I personally would like to
encourage people who believe IPCheckups are helping the patent system by
introducing some transparency, to go to their indiegogo crowdfunding page
and contribute to show their support.
Posted By Swaraj Paul Barooah to SPICY IP at 11/12/2012 12:50:00 PM