Insider Recap: IPwe’s Leann Pinto Briefs The USPTO As An Industry Representative
IPwe Chief Executive Officer, Leann Pinto briefed the USPTO as an industry representative, on January 26th, during the Patents and NFTs Roundtable.
The roundtable responds to a request from Senators Leahy and Tillis of the Senate Committee on the Judiciary’s Subcommittee on IP. The letter called for a joint study on IP law and policy issues related to NFTs. It urged the USPTO and the US Copyright Office to consult with the private sector. This roundtable provided a platform for industry experts like Leann Pinto to shape the future of IP and NFTs.
Introduction: How IPwe Begin Revolutionizing the IP Space with Blockchain
Erich Spangenberg, a true visionary in the IP space and a leading practitioner in patent monetization, founded IPwe.
Erich realized early on that patents were an untapped asset class that held enormous value. He then became well known for discovering unknown value in forgotten IP assets. Even with his success, he understood that the innovation engine needed to be fueled appropriately. As many valuable patents were hiding in plain sight, with many businesses and inventors incapable of realizing any return on investment.
Indeed, the fundamental business problem in the IP space is that intangible assets, particularly patents listed on balance sheets, need to be better utilized, undervalued, and misunderstood. Currently, there are approximately 25M active patents worldwide, all with low transaction, commercialization, and financing rates due to a lack of transparency, liquidity, and standardized asset valuation metrics.
Upon seeing the potential of blockchain, particularly NFTs, to address the friction and inefficiencies still present with patent transactions, Erich founded IPwe in 2018.
How Does IPwe Address The Fundamental Problem in the IP Space
During the Patent and NFTs Roundtable, Leann Pinto briefed the USPTO on IPwe’s current developments. Namely, IPwe’s tokenization of the corpus of issued, active patents worldwide, to the tune of 25 million IPwe Digital Assets.
IPwe Digital Assets, also known as patent NFTs, are the driving force behind IPwe’s Smart Intangible Asset Management (SIAM). SIAM is a SaaS solution that provides financial valuations and business insights for IP strategy.
In January 2023, IPwe formally announced the launch of SIAM. This announcement coincided with the news of IPwe’s future deployment of 25M patent assets as dynamic NFTs. These announcements took place during the week of the World Economic Forum in Davos, Switzerland.
With SIAM and patent NFTs, IPwe aims to empower companies. The goal is to provide a better understanding of their portfolio with real time, unbiased financial IP valuations.
SIAM merges the AI algorithm that our Founder, Erich Spangenberg, has been developing for over 15 years with dynamic IPwe Digital Assets. Patents are a representation of cutting-edge technology. Therefore, it is logical to also use advanced technology like NFTs to manage these assets effectively.
How Do IPwe’s Patent NFTs Work?
Leann Pinto further discussed how IPwe’s patent NFTs work. To start, IPwe populates digital representations of real world patents with public data provided directly by Clarivate. Clarivate is the worldwide leader in IP data. These NFTs can then be updated with the patent owner’s private data about each asset, including licensing and transaction history, evidence of use, prosecution history, etc.
Finally, IPwe’s AI assesses each patent’s quality and validity, enabled by the dynamic NFT, to assign a score out of 100. Then IPwe’s technology projects an objective financial valuation benchmark based on publicly reported data from comparable companies.
Why Maintain Patents as Digital Assets?
Then, Leann Pinto discussed the current necessity of digital representations of patents.
By tokenizing patents to operate underneath SIAM, all patent owners can have increased efficiency, transparency, and trust in the IP space, experience improved patent portfolio management, create value and liquidity for patent owners, and make the system more approachable and easy to use for all.
There are many advantages of maintaining an IPwe Digital Asset as a real world patent asset:
1. Data aggregation: IPwe Digital Assets can aggregate all relevant data about a patent in one place, allowing quicker and more efficient analysis; typically, all the relevant information around specific patents is not kept in one central repository but is highly fractionalized.
2. Data verification: Collected data is only valuable if it is trustworthy. When adding a data point to an IPwe Digital Asset, IPwe and other third parties confirm its level of trustworthiness, for instance, whether all the “public” records show the same owner for a patent, etc.
3. Patent History: IPwe’s mission is to ensure all the utilization history of a patent will sit on its corresponding IPwe Digital asset—not just who owns it, but who is licensing it, who is commercializing it, who is financing it—all of this information can be used to confirm value, making for a robust, liquid, transferable asset.
The digital transformation of patents benefits patent owners and their licensing and commercial partners by increasing transparency around the assets. This increased transparency also increases value and commercialization rates. Patent NFTs also benefit banks, insurers, capital market players, and basically anyone who lends, insures, or financially engages with IP. NFTs make trading IP more cost efficient and simplified, as all the key information is standardized and stored in one secure location.
Topics for Public Comment Addressed by Leann Pinto During the USPTO Briefing
Then, IPwe was asked to comment publicly on the following areas discussed in the USPTO’s Study.
Potential Future Applications of NFTs in the IP Space
During the roundtable, Leann brieded the UPSTO that IPwe is unaware of any enterprises or governments using patent NFTs. While IPwe uses NFTs for patents, Leann mentioned that other IP types would be well suited for NFTs. This includes trade secrets and know how, and she shared that IPwe has such avenues on its roadmap.
Challenges and Opportunities of IP-Based NFTs for IPwe and The USPTO
Leann Pinto stated that IP based NFTs pose more opportunities than challenges. For example, storing all relevant data about a patent in one location instead of spreading it across a business in multiple disparate databases will enable enterprises to achieve an efficiency never before known. In IPwe’s experience, the largest challenge is not necessarily IP related but more so technology adoption related. The current uses of NFTs have distorted the true nature of an NFT—a simple, digital encapsulation of data.
How IP Holders Can Utilize Patent NFTs
Then, IPwe briefed the USPTO on the following ways IP holders are currently utilizing IPwe’s patent NFTs.
1. To document the IP holder’s authenticity of an asset
2. To document the seller’s ownership or authority to sell an asset.
3. To document the seller’s authority to transfer any relevant or necessary IP rights associated with an asset
4. T o document any limitations related to IP rights surrounding the sale or the purchaser’s use of an asset.
What Opportunities IPwe is Currently Seeing NFTs Present to IP Holders
1. To easily obtain their IP rights; IPwe believes that patent offices worldwide will eventually adopt a dynamic patent NFT solution to similarly increase efficiency and transparency into the patent system, which in turn will increase innovation and make the IP system better overall
2. To transfer or license IP rights; Patent NFTs will increase efficiencies, decrease friction and provide greater transparency and liquidity in the patent market
3. To exercise overall control and management of their IP rights; digital rights management tools, mechanisms to facilitate the payment of royalties, etc.). IPwe asserts that by securely storing all data about each patent on the blockchain, patent owners will gain greater control and ease in managing their portfolio. This includes the automatic triggering of maintenance and royalty fee payments via a Smart Contract on the blockchain upon fulfillment of certain attributes.
4. To enforce their IP rights; including any mechanisms that could mitigate infringement or help ensure compliance with contractual terms associated with the sale of an asset. Smart Contracts technology associated with the NFT can ensure compliance with contractual terms embedded therein for all affected patents
Activating NFTs in IP Portfolio Planning and Management
Leann Pinto briefed the USPTO on the future role of patent NFTs. She predicts they will become the standard for managing patent portfolios. IPwe’s SIAM solution, gaining traction in Japan, serves as a prime example of this trend.
Recently, the Japanese government updated its Corporate Governance Code. This update requires companies to report their intellectual property investments in a clear and specific manner. Japanese companies are now adjusting their IP portfolios and management strategies in response to these changes.
SIAM and patent NFTs stand ready to facilitate this new reporting requirement. They present a compelling use case that is capturing the attention of IPwe and the USPTO.
Conclusion: IPwe and The USPTO
IPwe and the USPTO have explicitly acknowledged the staying power of blockchain and its applications, such as patent NFTs. This recognition, as Leann Pinto briefed the USPTO, marks a significant step forward in the digital transformation of IP strategy management.
IPwe, under the guidance of Leann Pinto, has been at the forefront of this transformation. The company’s use of NFTs is not only novel but also offers a more valuable solution to businesses than the original popular applications of NFTs. IPwe has introduced IPwe Digital Assets, which serve as digital representations of IP data. This innovative approach aids businesses in managing their IP assets more effectively.
But the benefits of IPwe Digital Assets extend beyond simple tokenization. They unlock additional commercial opportunities and analytics, enabling businesses to achieve a larger ROI with greater efficiency than ever before. This efficiency is a game changer in the IP space, offering a unique, elegant, and revolutionary solution to known problems.
In summary, Leann Pinto briefed the USPTO that the future of IP management starts with the effective use of NFTs and that IPwe and the USPTO should continue to comment on the future of blockchain and intellectual property.