Intangible assets are now responsible for 80% of all business value, much of which is represented by registered Intellectual Property (IP) – patents, trademarks and copyrights. The most significant remaining assets are a firm's proprietary know-how maintained as trade secrets.
Reductions in technology life cycles combined with the inherent uncertainties of patent prosecution have recently resulted in a greater emphasis on protecting innovation through secrecy. Indeed, the value and commercial impact of trade secrets can be seen in the growth in trade secret litigation and the size of published settlements and awards.
Ocean Tomo, LLC is an integrated Intellectual Capital Merchant Banc™ firm providing a holistic suite of financial products and services relating to all forms of IP. Our professionals lead the industry in IP centric expert testimony, strategy, investment analysis, risk management, transactional analysis, valuation and research. In recognition of the above and other recent business trends, we have enhanced our offering to now provide specialized trade secret management and monetization advisory services.
Ocean Tomo is a firm of experienced and dedicated professionals knowledgeable about all financial and operational issues concerning trade secrets. Our services provide clients with opportunities to uniquely realize and leverage the value of their trade secrets as business assets.
All IP disputes, and particularly those involving trade secrets, include complex economic issues that must be clearly communicated to judges and juries. Ocean Tomo professionals have extensive experience as expert witnesses in such matters, and that expertise synergistically benefits from our non-litigation advisory business. Our experts understand that trade secret remedies and their method of calculation can differ from other forms of IP and that the state-of-the-art in this regard continues to evolve based on case law which is often unique to a given State. Examples of such differences can include:
Ocean Tomo has been at the forefront of advancing the most accurate and complete trade secret damages determinations based on peer reviewed methods, either from known academics and professionals or of Ocean Tomo's own development. Ocean Tomo's track record includes some of the largest trade secret damages awards and the nation's most sophisticated trade secret owners.
Ocean Tomo's Strategy Business is built upon our unparalleled experience spanning nearly two decades across a comprehensive set of IP driven opportunities. Whether addressing a unique event or IP asset, or ongoing management of a company's entire IP portfolio, we begin with an understanding of management's overall concerns and objectives.
Ocean Tomo's Startegy services as directed to trade secrets are focused on:
IP-driven investment banking transactions are a frequent subject of news headlines. Key to such mergers and acquisitions is a thorough understanding of the trade secrets being acquired and the measures to protect them. Ocean Tomo professionals work with transaction principals as well as their counsel and bankers to identify and assure protection of such IP assets. Our firm is uniquely capable of adding value to such opportunities through our proprietary products and services as well as our industry leading holistic approach.
Ocean Tomo applies its expertise in understanding and valuing IP assets to minimize the possibility and impact of adverse events. Specific to trade secrets, Ocean Tomo and its partners offer risk management solutions addressing security, insurance, compliance and documentation of prior use.
Ocean Tomo's Trade Secret Security program is an integrated IP risk management offering which leverages Ocean Tomo's Strategy Services and TSC's Enterprise Security Intelligence Solutions. Ocean Tomo and TSC provide solutions to the challenges that trade secret owners face, including identifying their most valuable knowledge, monitoring and testing the measures to protect their trade secrets, identifying corresponding vulnerabilities, providing executive decision tools and actionable recommendations for mitigating those vulnerabilities and more effectively managing data using TSC's proprietary analytical processes and expertise.
Ocean Tomo brings access to trade secret related insurance protection through its relationship with the Intellectual Property Insurance Services Corporation and specifically through a multi-peril policy. A Multi-Peril Intellectual Property (MPIP) insurance policy provides first party coverage for a loss incurred in connection with an insured IP lawsuit. That policy, available as a rider, is for any entity with an IP risk covered under an abatement and/or defense policy. The MPIP policy responds after the final adjudication of a civil lawsuit that directly caused or established the loss of value.
Trade secrets are often licensed, either on a stand-alone basis or as part of a patent or broader IP license. In any such case, the trade secret licensor should consider periodic audits of licensee compliance with applicable obligations relating to, for example, royalties, maintaining secrecy, and accounting for new or improved developments. Given Ocean Tomo's holistic trade secret products and services as well as our substantial auditing experience, we are uniquely suited to conduct compliance audits for trade secret owners. We also provide consulting advice when clients are being audited by third parties.
Recent legislative changes also have heightened the importance of trade secrets. In particular, the prior use defense under 35 U.S.C. § 273 provides that, as to any U.S. patent issued on or after September 16, 2011, an accused infringer may be able to assert, as a defense to infringement, its prior commercial use of the patented subject matter in the United States. Ocean Tomo professionals rely on their holistic approach and expertise to best assure that such protection is readily available to clients.
Ocean Tomo professionals have significant experience in valuing IP assets. Ocean Tomo's trade secret appraisals account for unique value-related aspects of trade secrets, including investments in research and development, life cycle benefits and obsolescence, discount rates and corresponding cash flows.
Trade secrets tend to build value when one or more of the following characteristics exist:
Trade secrets can be an integral component to a company's operations and viability. Trade secrets are also increasingly becoming an alternative source of revenue and value recognition through license or a host of other transaction types. Ocean Tomo professionals have significant experience and unique expertise relating to the financial and other business terms of such transactions. In connection with any opportunity to leverage a firm's proprietary know-how or trade secrets, our experience and expertise will help to further the benefits that an owner will realize.