Louis Carbonneau on Brokering Patents After the Patent Gold Rush

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The golden age for patent brokers has come and gone but that doesn’t stop Louis Carbonneau.

“There are very, very few patent brokers nowadays. We’re just one of a handful left. And frankly, we get about four or five portfolios every single day that people want us to broker. We only say yes 1% or 2% of the time.”

As one of the world’s leading patent brokers, the CEO and Founder of Tangible IP has brokered over 4,500 patents and boasts close to 30 years in the industry.

With experience as Microsoft’s former General Manager of International IP & Licensing, Carbonneau has sat on many sides of the table. He shares his adventures in the industry (and lessons learned).

Carbonneau tells behind-the-scenes stories from his time at Microsoft, the common pitfalls of patent licensing, and why price isn’t always an essential part of the conversation when buying and selling intellectual property.

“Some people will not even want to acquire patents for free if they don’t like the patents because then they have to start paying for maintenance fees and prosecution fees. It’s like a free puppy. It’s only free for a few hours, and after that, you start paying,” says Carbonneau.

The episode also offers insight into a typical IP transaction at Carbonneau’s firm, helping those interested in selling their patents to understand what brokers — and buyers — are looking for in a deal.

Episode Highlights

[02:45] Dinosaurs and Microsoft: joining Microsoft’s legal team as a result of the acquisition of Softimage, the computer graphics company behind Jurassic Park.

[05:18] How a cross-licensing deal saved Apple: how a creative deal offered by Microsoft – in midst of its antitrust battles in the late 90s – helped save Apple.

[08:45] From licensing products to IP: under the direction of Marshall Phelps, a new addition to Microsoft’s team, Carbonneau began harvesting the intellectual property from Microsoft’s many research labs around the world.

[14:13] Balancing budgets: the complicated role of finance in licensing and monetizing intellectual property within a corporation. Which department owns a patent can make a big difference in how the intellectual property is managed.

[17:38] The golden age of patent brokerage: the creation of Intellectual Ventures and how he eventually founded his own brokerage firm, Tangible IP.

[24:49] What makes a good deal?: Carbonneau walks us through what makes (or doesn’t make) a good patent transaction. Ultimately, it is challenging to calculate the ROI of large deals.

[28:11] Changing tides: Carbonneau explains the change in the patent landscape as a result of the creation of the Patent Trial and Appeal Board (PTAB) and the subject matter eligibility mess.

[32:53] A typical transaction: Carbonneau outlines his brokerage firm’s intake process and share what he’s looking for when he’s helping to sell patent assets.

[37:10] The dirty little secret: Carbonneau shares the strategy used by many big corporations.

[39:35] Seller pitfalls: Who’s looking to sell their patents and what do they do wrong?

[44:47] Patent prosecution is ‘part art, part science’: discussion of what makes patents valuable and best practices for patent law.

[49:37] The perfect patent: It’s hard to find the patent that everybody likes and it’s not always about price. Carbonneau talks about the challenges he faces helping his buyers find patents worth acquiring.

[52:46] The IP ecosystem: Carbonneau walks us through the many players within the intellectual property industry and discusses the division of labor for the buying and selling of intellectual property.

[59:48] You’ve been warned: the challenges of being a patent broker with the current legal landscape

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