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Insider Recap: IPwe’s Leann Pinto Briefs The USPTO

Insider Recap: IPwe’s Leann Pinto Briefs The USPTO

Insider Recap: IPwe’s Leann Pinto Briefs The USPTO As An Industry Representative

IPwe President, 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 successes, 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 no 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.

These patent NFTs, or IPwe Digital Assets, power IPwe’s Smart Intangible Asset Management (SIAM) tool, a SaaS solution for IP analysis, valuation, and management. The launch of SIAM was formally announced in January 2023, concurrently with the news of IPwe’s digitalization of 25M patent assets as dynamic NFTs during the week of the World Economic Forum in Davos, Switzerland.

IPwe—through SIAM and patent NFTs—seeks to empower all internal stakeholders with simple, consistent, relevant financial and performance metrics to further innovation.

SIAM combines the AI algorithm that our Founder, Erich Spangenberg, has developed continuously over the past 15+ years with dynamic IPwe Digital Assets. Patents represent cutting-edge technology; thus, it only makes sense to use cutting-edge technology like NFTs to better manage those assets.

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 of each patent, efficiently enabled by its nature as a dynamic patent 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, experiencing improved patent portfolio management, creating value and liquidity for patent owners, and making the system more approachable and easy to use for all.

There are many advantages of maintaining an IPwe Digital Asset of 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 markets players, basically anyone who lends, insures, or financially engages with IP. Because 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 stated that IPwe is unaware of any enterprises or governments using patent NFTs. While IPwe uses patent NFTs to manage patents, Leann mentioned that many other types of IP assets would be well-suited for NFT management including trade secrets and know-how and that IPwe is exploring these avenues.

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 spread 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. To 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 right. 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 (e.g., digital rights management tools, mechanisms to facilitate the payment of royalties, etc.). IPwe believes that by storing all pertinent public and private data about each patent asset securely on the blockchain, patent owners will experience greater control and easier management of their entire IP portfolio, including maintenance and royalty fee payments, which can be triggered automatically 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

How NFTs Are Used in IP Portfolio Planning and Management

Leann Pinto briefed the USPTO that eventually all patent owners will manage their entire patent portfolio with patent NFTs. For example, IPwe’s SIAM solution, a patent NFT-backed IP management tool, has seen great interest in Japan. The Japanese government has recently issued revisions to its Corporate Governance Code. This code requires reporting of a company’s investments in intellectual properties in an “understandable and specific manner.” Japanese companies will adjust their IP portfolios—and management thereof—in response to these recent revisions.

Conclusion: IPwe and The USPTO

The USPTO’s Study explicitly acknowledges that blockchain and its applications, like NFTs, are here to stay. IPwe’s use of NFTs is novel. But, IPwe Digital Assets, or patent NFTs, provide a more valuable solution to businesses than how NFTs were originally made popular. For IPwe and the USPTO, NFTs as digital stores of IP data help businesses manage their IP assets. And then how, beyond simple tokenization, IPwe Digital Assets will unlock additional commercial opportunities. Then IPwe Digital Assets will enable business to achieve a larger ROI with greater efficiency than ever seen before. IPwe believes that patent NFTs are at the heart of the digital transformation of IP. They provide a unique, elegant, and revolutionary solution to known problems in the IP space.





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