A Successful Patent Pool Used Article One Partners’ (AOP) to Help Enforce a Level Playing Field
Intellectual property and Patent owners find it challenging to comprehensively enforce product licensing agreements and identify all potential targets for licensing. Products may be sold in storefronts all over the globe, making it difficult to locate unlicensed products and even more so to secure the evidence of use needed to encourage cooperation and avoid litigation. This not only hurts the licensing entity but it puts the legitimate licensors at a competitive disadvantage. This case study examines how a standard essential patent pool leveraged Article One Partners’ (AOP) crowdsourcing model to gather evidence of non-compliant products.
Opportunity to Identify Potential Targets for Licensing The patent pool is the licensing arm of a consortium of IP owner’s high-volume consumer electronics products. Their responsibility is to establish licensing agreements with manufacturers around the world for the products. They are also responsible for enforcing those license agreements and identifying manufacturers who are using the technology without a license. The pool wanted to determine if noncompliant products were in the down-stream markets. In-turn the pool would use the AOP evidence to compel those presently unlicensed to cooperate. Their goal was to create a level playing field and illustrate to both its founders and its licensees they were taking action. This particular AOP client requires licensees to put a unique label on its retail packaging. With a visual inspection of a product, the feature enabled down-stream identification. While the pool utilizes multiple tools to assess the sale of licensed products, the AOP ability to perform a physical check at locations around the world was compelling. The AOP provided visual evidence enabled the pool to quickly react to trends in the market.
AOP’s Crowd-Source Solution As indicated, the pool felt that AOP’s crowdsourcing model was the perfect approach to use to scour the globe at a retail level and find all of the manufacturers they could possibly find who were not legitimately licensing the product. Since each product needed an official licensed label from the pool on the box to establish legitimacy, AOP created a survey for its research crowd to identify products across the globe that lacked the proper label. In this case, the survey form asked for the store location, date, the product name and model number, and six photographs of the box (one for each side) to establish that the license label was not present. There was a specific location where it was supposed to be displayed but the pool requested all six sides so they did not pursue licensees who simply misplaced the label. To further narrow the search to only unlicensed products, they carved out certain brands they knew to be in compliance.
The objective was to clearly pinpoint brand owners in the channel who were not in compliance with the licensing standard and collect bullet-proof evidence (what they were selling and where, with photographs) to convince those companies to become licensees. “AOP’s crowdsourcing solution was more comprehensive geographically and it provided more consistent and actionable information, with documented findings, than other alternatives.” – Director, Licensing
AOP Crowd Survey Results The turnaround time on this project was set at three months. In that time, AOP’s crowd identified every previously “known” unlicensed party, which demonstrated the thoroughness of this approach and established credibility. Further, the AOP solution revealed an unanticipated result by identifying manufacturers moving from small incidental markets into market-rich territories that were not on pools initial radar. Finally, the crowd identified legitimate licensed entities that were selling product without the label and ostensibly without reporting it for royalty purposes.
Business Impact The AOP approach provided documented and actionable information in the allotted timeframe, a hallmark for their service. The pool was able to help companies maintain compliance, make recoveries and a net gain with respect to incremental revenue from licensees. Most importantly is the intrinsic value the pool gained. They were able to show existing licensees they were enforcing a level playing field. As a result, manufacturers and legitimate licensing entities were happy and pleased that the pool was taking this initiative. The repeatable nature of this work allowed AOP and its client to conduct this study on several occasions and sometimes with a specific geographic focus to identify new opportunities for licensing that presented themselves over time.
Learn How AOP Can Help You with License Compliance or Proving Counterfeit Whether you are a consortium or individual with profit and loss responsibility for your organization’s licensing program, AOP can help you. Our process, workflow and technology solutions leverage a crowd of 36,000 researchers in 170 countries to identify infringers and create a paper trail with the evidence of use you need to encourage cooperation and avoid costly litigation. AOP’s approach has also been helpful to companies trying to find counterfeit product. To discover how we can help you, please contact us at 1-347-901-4820 or
[email protected].
