Ocean Tomo has a long history of working with Asian clients seeking to realize the value of their global intangible assets. Indeed, the origination of the name Ocean Tomo reflects the company’s experience in working with Asian clients to satisfy their intellectual capital needs.
Continued advances in Chinese research and development combined with National programs to increase patent filings has created a substantial need by Chinese firms to apply intellectual property (IP) management best practices. Ocean Tomo has substantial experience advising IP owners at all levels of maturity and sophistication. Our China Technology and Intellectual Property Services (CTIP) Services focus on specific issues most relevant to Chinese firms active internationally, with service teams that help clients to feel comfortable and secure in these important matters.
Ocean Tomo’s offerings leverages the unique intellectual property Opinion, Management and Advisory Services of Ocean Tomo with the essential Chinese business, market and legal insights of partners within China including Sinofaith IP Group. The collaboration results in a superior understanding:
Through significant professional experience working in China, the CTIP Service liaisons provide unique Chinese business and cultural insights to all Ocean Tomo engagements on behalf of Chinese companies facilitating a better understanding of client needs.
Our partners and liaisons in China are professionals who are part of the CTIP Services team and share a thorough understanding of current market conditions in China. With this insight our professionals are better equipped to develop solutions for our Chinese clients to realize the value of patent, trade secret and brand assets.
If applicable, a network of independent counsel can help clients to incorporate up-to-date legal and IP rulings in China to support cross border licensing or other technology transfer transactions.
Ocean Tomo’s China Technology and IP Services team works to apply a comprehensive offering selected from:
China Technology and IP Services Are Driven by the Client Situation
OCEAN TOMO SERVICES
|Subject of International Trade Commission investigation seeking a limited or general exclusion order prohibiting infringing goods from entering the US||Serve as expert witness on issues related to domestic industry and commercial success|
|Involved in intellectual property (IP) litigation in the US||Serve as expert witness actively participating in the discovery process and providing an expert opinion on economic damages|
|Subject to Inter Partes Review (IPR) proceedings in the USPTO seeking to invalidate patent(s)||Serve as expert witness addressing opinions of commercial success|
|Seek valuation in order to prepare to sell patents, use as security collateral, among others||Provide independent, third party appraisal of patent value; identification of potential counter parties|
|Explore the potential of acquiring a company with technology in the US||Review maturing patent portfolios to identify potential M&A opportunities and targets; assess IP values owned by the target company; implement advantaged transaction structure|
|Structuring strategic IP portfolio||Evaluate competitive threats and opportunities presented by the active patent landscape; correlate patents to existing and planned products with the goal of reallocating patent prosecution resources|
|Exploring monetization of underutilized patents||Evaluate the value of patents to third parties; offer a place to sell/ buy patents; identify potential buyers|
|Training new IP staff||IP management and monetization training|
|Plaintiff in patent litigation filed in China||Market Royalty Rate Report (MR3)|
Ocean Tomo was retained by Verizon Communications Inc. to provide IP Advisory Services focused on Yahoo! Intellectual Property assets in advance of the company’s acquisition of Yahoo!.
Ocean Tomo Transactions represented the German chemical company BASF SE in the sale of over 500 issued and pending patents related to OLED. The ~$96 million USD IP transaction between BASF SE and the wholly-owned subsidiary of Universal Display Corporation, UDC Ireland Ltd. was comprised of 86 patent families, representing 15 years of research and development by BASF in phosphorescent materials and technologies.
Ninebot (Tianjin) Technology Co., Ltd. subsidiary Segway, Inc., creator of the self-balancing electric scooter market, retained Ocean Tomo Managing Director Michael Milani to testify at the International Trade Commission (ITC) regarding U.S. domestic industry, including appropriate remedy, bond, statutory public interest factors and commercial success of patented. The ITC determinations were consistent with the opinions offered by Mr. Milani leading the ITC to grant a cease and desist as well as a limited exclusion order against the infringers.
Ocean Tomo determined the damages related to the widespread infringement of CSIRO’s essential WiFi patent against multiple defendants across multiple industries. After depositions were completed, all parties settled the case totaling over $220 million.
Ocean Tomo was hired in 2013 by the EMEA debtors to assist with all valuation and allocation issues related to Nortel’s IP. In order to determine the appropriate allocation of sales proceeds, Ocean Tomo performed an independent valuation of the ~2,500 patents and other IP which was sold along with Nortel’s various business lines and determined the appropriate commercial life of Nortel’s IP portfolio.
Tooltechnic Industries Co. Ltd. subsidiary Milwaukee Tool retained Ocean Tomo CEO James E. Malackowski to testify on financial damages resulting from patent infringement by Snap-on, Inc. At the conclusion of the trial, the jury awarded damages of $27.8 million, matching Mr. Malackowski’s opinion in the case.
Seeking to bring two of its seminal innovations to the U.S. market, the company engaged Ocean Tomo to develop monetization strategies for each. Leveraging senior team members from Innovation Management, Intellectual Property Strategy, and Valuation, we developed two strategies: an asset sale for one portfolio and a venture development strategy for the other.
For more than 30 years, Ocean Tomo professionals have led the field with respect to intellectual capital thought leadership. Select milestones of achievement include:
Organized the first national practice to offer IP valuation opinions.
Created the first scaled investment banking practice, in partnership with leading Wall Street firm, dedicated exclusively to patent based structured finance.
Established a Live Public Auction Marketplace for IP rights.
Created the Ocean Tomo 300™ Patent Index – the nation’s first index based on the value of intellectual property.
Ocean Tomo, the Intellectual Capital Merchant Bank™ firm, provides financial services related to intellectual property and intangible assets including financial expert testimony, valuation, strategy consulting, patent analytics, investment advisory, innovation management consulting and transaction brokerage.
Our Opinion, Management, and Advisory Services are built upon more than three decades of experience valuating intellectual property in the most rigorous of venues – State, Federal and international courts. Our financial, market and technical experts provide a unique understanding of the contributory value of proprietary innovation. This is the cornerstone of our business. This insight permeates every practice and client engagement.
Ocean Tomo assists clients – corporations, law firms, governments and institutional investors – in realizing Intellectual Capital Equity™ value broadly defined.