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The Attorney’s Role in Assisting Clients with Patent Valuation

By Bruce W. Burton, Scott Weingust, and Alton L. Hare

©2015. Published in Landslide, Vol. 8, No. 1, September/October 2015, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

A patent attorney’s practice, whether as in-house or outside counsel, often involves a variety of responsibilities. For example, patent attorneys often find themselves counseling clients involved in corporate transactions such as patent sale or purchase, licensing, contribution of patents to joint ventures, mergers and acquisitions, and use of patents as collateral to raise debt or equity capital. Similarly, patent attorneys may advise clients on strategic patent-related issues including corporate restructuring, development of research and development (R&D) investment strategies, and patenting decisions, among others.

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