Patent Law FAQ

BlueIron is taking several risks when financing a patent.

BlueIron is taking the risk that the patent will even issue.

BlueIron is making an investment in researching the invention, writing the patent, and getting the patent through the patent office.  If BlueIron fails to get a patent, you can walk away from the deal at any time, and BlueIron loses its investment.

BlueIron is taking the risk that the patent will have value.

BlueIron is also assuming the risk that the patent will be valuable.  If you walk away from the deal, BlueIron is left holding the patent and will need to liquidate the patent.  We will probably try to sell the asset to someone in the field, auction off the asset, or try to find someone who might license the asset.

Why is it important that BlueIron assume these risks?

As a company who has intellectual property, you need to rely on those assets when you are making business decisions.  A conventional patent attorney cannot really tell you the truth about your patents.  They have an inherent conflict of interest: don’t ask the barber if you need a haircut.

By taking ownership of the patents and leasing them back, BlueIron has the exact same interest as you do: solid, investment-grade patents.

Yes. The buyout cost for a patent is set up front and will not change.

The buyout is NOT a percentage of patent value, revenue, or any other measure. We do not take warrants, “success fees,” or any type of carry.

Our job is to build Investment Grade Patents for you, not become a tax on your success.

Typically, the total price for a patent will be defined at the beginning of an engagement. If you need to buyout the patent after it is filed but before the examination begins, the buyout price is 1/3 of the total price. If you choose to buyout the patent after examination begins but before allowance, the buyout price is 2/3 of the total price.

Financially, a startup’s cost of capital is extremely high – nespecially at the beginning – so every dollar needs to be spent wisely. n Leasing or renting assets is much more capital efficient.

Most startup companies lease office space and even lease furniture nthrough a coworking space.  They lease computer services through Amazon nWeb Services and Microsoft Azure.  Virtually all of the tools they use nare SaaS or other “leasing” type models.

The reason why leasing or renting is attractive is two fold:

• Leasing an asset means you do not have to pay for it up front.
• Leasing an asset means someone else takes care of building and maintaining the asset.

When you consider a startup company’s cost of capital, BlueIron’s financing is actually cheaper on a Net Present Value of money basis.

The big benefit of “leasing your patents” is that BlueIron is nperfectly aligned with your business.  We need to create good, solid nassets and will only do so when there is a business reason.  You will nnever get the feeling that you are asking the barber if you need a nhaircut.

The legal structure is a convertible note, lease-back structure. The IP assets are held in a Special Purpose Vehicle (SPV), which is how virtually all of the Fortune 500 companies hold their IP.

The SPV grants an exclusive license to the startup with a buyout option. The startup can exercise the buyout option at any time.

A buyout option is always available and always at a fixed price. There is no way BlueIron can “pad the bills” or raise the buyout price because everything is a fixed price.

Sometimes, BlueIron has held patents for 3, 6, or 12 months and the company exercises their buyout option. In other cases, the startup has a high cost of capital and it makes sense for them to pay over time.

BlueIron can get a US patent as quickly as six months or less in some cases.  However, many times it takes 3 to 5 years.

How do we do it?

BlueIron’s founder, Russ Krajec, had the opportunity to join a startup company where we needed patent assets as fast as possible.  In that startup, he was able to experiment with 100 patent applications to find the best way.

The answer: the Patent Prosecution Highway in the US.  Using the PCT/PPH, Russ was able to get patents issued in the US within 4-8 months very consistently.

One key to expediting a patent is proper preparation.  A patent search is critical to understand the landscape and to make sure that the claims are appropriate: not too broad but directed at an economically valuable invention.

Another key is the right strategy.  The USPTO has a program called “Track One” which has several pitfalls, but it costs about the same as a PCT application.  It is the PCT application which gets you on the Patent Prosecution Highway, which is much better than Track One.  Feel free to give us a call and we can talk about the differences.

You have full control of your patents while BlueIron finances them.  However, just like having a landlord for your office space, BlueIron “owns” the patents.

There is a difference between control and “ownership.”  BlueIron “owns” the patents, but you control them.

Having control of the patents means that you get all the benefits of owning the patents without having to pay for them up front.  You get to enforce the patents, cross-license the patents, and can even sell your rights to the patents.

BlueIron provides at least $500K of patent enforcement insurance for your patents, so that you always have dry powder to use those patents as you see fit.

Even though BlueIron provides the patents and insurance to use them, you are in complete control of how – and if – you choose to use the patents.

Yes! Our due diligence reports are highly respected by investors.

Our patent financing due diligence process not only evaluates patentability, but also enforceability, the economic advantage of the invention, its value to the startup’s market, as well as its value to competitors. Solid business value is REQUIRED before BlueIron can finance the invention, and BlueIron’s due diligence reports puts investor’s minds at ease about their investment.

BlueIron’s financing ensures that we have “skin in the game.”  We succeed only if the patents are valuable and when your company is successful. Investors understand an “alignment of interests.”

Our investment is non-dilutive.

BlueIron’s financing is non-dilutive. Founders, angels, or other equity-based investors are not diluted because BlueIron does not take equity.

The inventor’s money goes much further, meaning they get a higher overall return.

Yes!

Just like leasing a car, you have full CONTROL of the IP assets without having to pay the full price up front.

Because you have an exclusive license, you – and only you – decide nhow to use the patent assets. You can enforce, license, sublicense, ncross license, or sell your business assets. BlueIron has no veto power nand no say in how you run your business.

BlueIron provides Patent Enforcement Insurance with every patent nfinance agreement.  This means you have pre-paid legal fees ready and nwaiting to assert the patents against infringers.  We do not want you ton fail to enforce the assets just because of lack of money.