Voice of IP
Clause 8
Chris Agrawal: AIPF’s President on Growing $1 Billion Portfolio & Succeeding in IP Field

Chris Agrawal: AIPF’s President on Growing $1 Billion Portfolio & Succeeding in IP Field

Chris Agrawal is President of the Association of Intellectual Property Firms and partner at Bookoff McAndrews.  He was instrumental in one of the biggest patent transactions in history and the reason Eli got into patent law in the first place.  If you’re a startup founder or an executive at a growth stage company worrying about patent protection or wondering how to scale your patent program, download and listen to this episode today.

On how AIPF helped IP firms navigate the pandemic:

“I was really thankful to have the association because we were all talking with each other and sharing information about what we were doing. And so it was really helpful as the pandemic was hitting - in late February and early March of 2020 - [to be] talking to each other about what we were seeing internationally from our clients, from other firms.”

Learn how Chris approaches building a valuable portfolio of patents:

“The first place I start is looking at the business. What does the business look like today? And what do they need first and foremost? And then from there, start looking at more of the nice to haves. Is there something else where there's real revenue, but it's really not connected to our business? Where can we turn the portfolio itself into an asset separate from our business?”

How he thinks about monetizing valuable patents:

“In general, you start to map out the market. The first place you look at with any deal is who are the infringers? What does the market look like for these claims? Who needs the claims? Who's practising the claims? And what does that market look like? Who are the big players? And also, who is in need of a portfolio like this?”

Finding the right balance for the client relying on outside counsel:

“There's this kind of dance that will happen at certain points in prosecution with an examiner where you have to kind of really quickly make some decisions on the fly about what deals to make with an examiner . . .how to change scope here and there a little bit.  I think ideally you want to empower your outside counsel to be able to have a little bit of leeway with examiners so that, so that that dance can happen.

I think it's really powerful if you can empower your counsel to do that.”

For all this and more, don’t miss Chris Agrawal on this week’s episode of Clause 8.

On today’s podcast:

  • Perspective as AIPF’s president on how firms have been able to succeed over the last year

  • Building and selling $1 billion patent portfolio

  • Prosecuting old patent applications that read on new technologies

  • Scaling a patent portfolio for startups and growth stage companies

  • Strategically thinking about role of in-house IP counsel

  • Unique challenges of handling patent prosecution work

  • Priceless advice to law firm attorneys 

  • Staying on top of patents as GC


Voice of IP
Clause 8
The podcast listened to by sophisticated in-house counsel, judges from around the world, IP policymakers, senior USPTO officials, and top patent dealmakers and attorneys to stay ahead of the curve by understanding the personalities and forces shaping IP.
Eli Mazour’s love of talking to people – along with his belief in the importance of America’s patent system – led him to start Clause 8. Clause 8 features conversations that provide strategic insights about how to best deal with various patent-related issues. Some of the previous guests include America’s great innovators, federal judges, USPTO Directors, top IP staffers on Capitol Hill, and Carole Baskin’s attorney from the documentary Tiger King.
It's the #1 podcast about IP and is in the top 2.5% of all podcasts according to Listen Score. The podcast has been covered and cited in many publications, including Bloomberg, Law360, Courthouse News Service, Above the Law, IAM, and Original Jurisdiction.