Israel is known as the Land of Milk and Honey, the Holy Land, and the Startup Nation. It also consistently ranks among the top five countries for the number of Patent Cooperation Treaty (PCT) patent applications filed per capita. However, due to its relatively small size, it is understandable that it is not known as a hotbed for major patent deals. But surprisingly, the man behind many of the world’s biggest patent deals is Lillian Shaked, an unassuming Tel Aviv-based attorney.
In this episode, Lillian shares how she went from being an Israeli commercial lawyer to working with one of the largest patent monetization companies. She generously shares her insights she gained along the way and her thoughts on what it takes to be successful in the future. She also talks about moving from being just a “lawyer” closing deals to monetizing her own patents. She is now doing so from her new position as Vice President of Licensing for Transpacific IP.
On why not every cent should be exploited from a patent deal
“Once you do one deal, you do two deals, you do three deals, and they see you coming [out] We have researched, worked and negotiated rationally with quality work products. Then it will be much easier to continue working with people. If he’s going to be mean by burning bridges, consider these big his players to be against, even if he gets one deal and he gets a few cents on every dollar. is needed. second and third time. It gets even harder when you can’t maintain relationships. “
Impact of patent litigation funding
“that is [patent monetization] Bring the industry back into business. Like I said, it’s no longer a single patent deal, so it’s become very expensive to get a portfolio… In its heyday, you could get it and license it in 90 days without litigation and I put money in the bank for 90 days from acquisition to license. Such has been extended from 3 to 5 years. So it became more expensive and more lawsuits. I don’t think the industry would have bounced back if litigation funders hadn’t stepped in to fund it. This allows companies and individuals to continue to claim and license their patents. “
How Patent Litigation Funding Has Evolved
“I have seen another big shift in the universe. Originally, patent litigation funding companies were very reluctant. It funded the company, so what the company wanted to get from a revenue standpoint: the proceeds from the settlement and the license and what the fund thought they were entitled to. There has been a sort of disagreement between what should have been and what should have happened by now, so they have moved from a very passive role to a more active one, with the patent litigation fund Some are actually scouting. [and] We are looking for a deal ourselves. “
Why litigants block win-win patent deals
“The ego is big… you have to win in court. On the other hand, for a transaction attorney, winning is getting the deal done. So in terms of the actual negotiations, it’s a slightly different outlook. Dealers are on an hourly or contingency basis and are interested in the highest possible settlement that can be reached.A transaction attorney may not have that in mind. Also, clients often use different patent attorneys for different issues, whereas as a transactional attorney, I work with the same clients regardless of patent or litigation. So I’m building more relationships with my licensees…when it comes to deals, the sooner you get your license, the better for everyone.”
Advice to close the deal
“Hurry up, don’t wait for things. There is. You have to keep people engaged.”
The Misguided Shame of Enforcing Patents
“I think there is this shaming issue, and patent funding companies don’t want to risk shaming. But again, I don’t understand this bit about shaming. You compare patent monetization and litigation to trespassing, you have land and people have to walk on it to get to the other side, uh, you do that You cannot allow someone to walk on your land and go to another place without giving that person permission. [It’s the] Same thing – you shouldn’t use someone else’s patented technology without permission and license. ”
Other topics discussed:
- How a move from Canada to Israel set her apart in a burgeoning Israeli tech sector
- How Lillian Built a Patent Trading Career From One Patent Deal
- Working with Erich Spangenberg
- Benefits of working from Israel in US patent deals
- The Importance of Ongoing, Positive Relationships Between Parties Involved in Patent Transactions
- Different Approaches to Monetization: Soft Licensing and Pre-Negotiation Litigation
- Infringer/Potential Licensee Reasonable Monetization Strategy
- Impact of course correction on the patent market after the economic boom of the early 2000s
- Terms to Avoid in Patent Transactions
- Why and how deals fail
- The Importance of Patent Deal Momentum
- Why BlackBerry’s Patent Deal Collapsed
- Transitioning from trading as a lawyer to obtaining a patent from scratch
- Advice on building a valuable patent portfolio
