Interview with James E. Malackowski, the Founder of Ocean Tomo – Patent Auctions, Managing Patent Portfolios, Blockchain in the Field of IP, the Market For Data Rights – IP Fridays – Episode 160
Description
</figure>My co-host Ken Suzan and I are welcoming you to episode 160 of the IP Fridays podcast!
Today`s interview guest is James E. Malackowski, the founder of Ocean Tomo, in my view the first successful patent auction venue. We talk about monetization and auctioning patents, use of blockchain technology for IP and especially for licensing, the economics of data rights and much more. But before we jump into this interview, I have news for you:
The EUIPO and the EPO just released a new study ““Intellectual Property Rights and Firm Performance in the European Union.” on how intellectual property rights (IPRs) boost business performance in the EU. It looks at trade marks, designs, and patents, and shows that companies owning IPRs earn more revenue per employee and pay higher wages. Small and medium-sized enterprises benefit the most, with a 44% increase in revenue per employee compared to firms without IPRs. Yet, fewer than 10% of SMEs use registered IPRs—showing big untapped potential.
The USPTO has unveiled a new strategy to guide the responsible development of artificial intelligence. This plan aims to clarify patent rules for AI inventions, foster public-private collaboration, and address ethical considerations like transparency and fairness. By creating clear guidelines and balanced regulations, the USPTO hopes to empower innovators and bring more AI-driven solutions to market. This strategy underscores the growing impact of AI on all industries and highlights the USPTO’s commitment to shaping the future of innovation.
The European Patent Office (EPO) has introduced a new investor-mapping initiative to strengthen Europe’s innovation ecosystem. By identifying key investors, the project aims to bridge the gap between invention and market, helping inventors and businesses find the right funding and partners. The report introduces a new metric, the Technology Investor Score (TIS), which is the proportion of companies in an investor’s portfolio that have filed patent applications. This effort is designed to boost Europe’s competitiveness and foster greater collaboration across industries, research institutions, and venture capital.
In this episode of IP Fridays, I speak with James E. Malackowski, an intellectual property (IP) pioneer best known for founding Ocean Tomo. James shares how Ocean Tomo introduced the world’s first large-scale public auctions for patents, trademarks, and copyrights. He also explains how these auctions helped create market-based “price discovery” for IP assets—something that had never been done so openly before.
Beyond auctions, James discusses strategies for CEOs of mid-sized tech companies to extract real value from their R&D and patents. He emphasizes the importance of planning ahead, understanding your own portfolio, and making IP a regular topic at the board level. We also talk about why early, strategic patent filings can protect your company from missing out when others file first.
Another major topic is the potential of blockchain technology for patent licensing. James outlines how blockchain can offer an immutable and transparent way to package and transfer patent rights—potentially even creating an “IP coin” to finance innovation. He notes that while blockchain is already starting to be used in data rights, it could reshape the entire licensing landscape by allowing more efficient trading and tracking of IP.
We also cover the idea of the complete economic chain for IP licensing, which means recognizing everyone’s contribution from the first supplier all the way to the final product manufacturer. James says it may be more efficient to handle royalties and costs at the beginning rather than chasing every link in the chain later.
Finally, we explore how the merger with J.S. Held has expanded Ocean Tomo’s services. With over 500 in-house engineers, J.S. Held brings deep technical expertise to help Ocean Tomo’s clients in areas such as valuation, expert witness services, litigation support, and more.
Key Topics
- How Ocean Tomo’s patent auctions changed the market
- Strategies for CEOs to plan and manage their patent portfolios
- Blockchain’s role in creating more transparent and tradable licensing rights
- The “complete economic chain” concept for fair and efficient IP royalties
- Why data rights and new marketplaces for data are becoming more important
- Ocean Tomo’s expanded offerings and partnership with J.S. Held
Connect with James
- Email: james.malackowski@jsheld.com
- Website: www.oceantomo.com (or www.jsheld.com)
Enjoy the episode, and let us know your thoughts on these emerging trends in the IP world!
Jim Malackowski: Hello everyone, my name is Jim Malackowski. I am the co-founder and senior managing director of Ocean Tomo, and I’m thrilled to be here on IP Fridays.
Rolf Claessen: Today’s interview guest is James Malackowski, the co-founder and senior managing director of Ocean Tomo, a part of J.S. Held. Before founding Ocean Tomo over 21 years ago in 2003, Jim had several positions in the IP field. He holds a degree in business administration from Notre Dame in Indiana, and in 2022, Jim was inducted into the IP Hall of Fame. Thank you very much for being on our IP Fridays podcast, Jim.
Jim Malackowski: Rolf, thank you for having me. I’m excited for the conversation.
Rolf Claessen: Alright. So, I already mentioned that you are the founder of Ocean Tomo, and you introduced the world to the first public auctions of patents, trademarks, and copyrights. In my personal recollection, it was the first patent auction site that really worked on a larger scale. I think there were some tries before that, but no one really succeeded. So, tell me more about the story behind Ocean Tomo and why you think it was successful.
Jim Malackowski: Sure, and Rolf, your question is actually a question within a question. Let me tell you about Ocean Tomo, and then let’s talk specifically about the auction, because that itself is a really interesting story. With respect to the firm, the history of Ocean Tomo is really very similar to the history of my career. So, we can trace our activities back to the Court of Appeals for the Federal Circuit in the United States changing and forming a new way of looking at intellectual property back in the 1980s.
Jim Malackowski: I started my career as an accountant shortly thereafter and opportunistically happened to work on calculating damages for patent infringement litigation. I was the first in a very small team to do that straight out of college. Because I worked on the first assignment, they gave me the second. After the second, the third, and then I was declared a member of a small expert team as a result. So, I spent the early part of my career, the first three years, doing nothing but looking at intellectual property in a litigated situation.
Jim Malackowski: In the late 1980s, a client came back and asked me to value a patent, not for the courtroom, but for a business transaction. I can remember that day well. I literally ran down the hall to the senior partner’s office talking about my first piece of revenue credit. His answer was no. He said it’s not something that we do. It wasn’t something covered by the accounting standards or their insurance. So, a week after my 25th birthday, I left the firm. Four of my peers came with me, and we started what was the first-ever intellectual property dispute accounting and valuation boutique. We got lucky. That firm grew from five people, later partnered with private equity, and ended up selling nearly 300 people in the late 1990s.
Jim Malackowski: After that, I went to work at one of the investment houses that had invested in us and really had my eyes opened to the power and impact of intangible assets and intellectual property, particularly as it relates to investment decisions. I worked on that for two years. Then, when the non-compete was over from the sale, literally to the day, we started Ocean Tomo in 2003. My history has been an amalgamation of those experiences.
Jim Malackowski: Your question also asked about the auction, which is one of our favorite chapters with
United States
