Joseph A. Agiato, Counselor

Recent Positions

 Mr. Agiato is President and Chief Executive Officer of Newlight Capital L.L.C. (“Newlight”), a specialty finance company focusing on debt transactions secured by the intellectual property rights of a company for bank lending purposes. He has overall management responsibility for Newlight’s day to day operations including the structuring and pricing of deals, over-seeing all due diligence functions and developing and maintaining deal sourcing, patent and trademark/tradename valuations.  His valuation work is relied on by banks, insurance companies and various investors.

Prior to his current position at Newlight Capital, Mr. Agiato was a Managing Director at Licent Capital LLC, a firm specializing in intellectual property royalty securitizations. While at Licent Capital, Mr. Agiato was responsible for establishing due diligence procedures, assessing royalty streams from licensed technology, sourcing transactions and authoring the credit policy manual for the firm. In addition, he worked closely with issuers and attorneys on developing creative deal structures for various types of intellectual property rights including patents, trademark/tradenames and trade secrets.

Mr. Agiato has served as the National Practice Leader for Intellectual Property Services at KPMG, an international accounting and consulting firm, where he pioneered and developed intellectual asset management procedures that helped clients generate significant incremental returns from their intellectual property rights. After leaving KPMG, Mr. Agiato served as an exclusive consultant to Deloitte & Touche’s Intellectual Asset Management practice where he contributed to the establishment of “best practices” and was part of the firm’s Intellectual Property practice leadership group. He has performed trademark and tradename valuations for Coca-Cola, Sony, Pepsi, Ford, Adrienne Vittadini, Estee Lauder, Microsoft and numerous other entities for a variety of purposes including sale, license, or brand extension.

 

Educational Background

Mr. Agiato received his Bachelor of Science degrees in Accounting and Economics, a Master of Business Administration with a concentration in Finance, and a Masters Degree in Valuation Sciences. He is a Certified Public Accountant, and was formerly (15 years) an Accredited Senior Appraiser (business valuations) in the American Society of Appraisers, Accredited Business Valuer, Certified Business Appraiser and “Fellow” of the Institute of Business Appraisers.

 

Professional Experience

Mr. Agiato has reviewed thousands of licensing agreements and has been a lead negotiator in licensing discussions with and on behalf of several Fortune 500 companies. His professional experience also includes direct participation in over $40 billion worth of IP transactions, valuing over 2,000 patents, trademarks, tradenames and trade secrets as well as hundreds of technologies for small inventors, universities, and Fortune 1000 companies including: Microsoft, Mitsubishi, 3M, DuPont, Dow Chemical, NEC, Invitrogen, General Electric, General Motors, Allied Signal, Ford Motor Corp., as well as other organizations.

He has significant experience in valuing intellectual property rights, for a variety of purposes including licensing, joint ventures, fairness options and dispute resolution. He has, through Newlight, engineered a series of very creative  structures which substantially mitigates risk for the investor while allowing organizations to leverage intellectual property as an off -balance sheet asset. His experience also includes developing underwriting criteria to assess the impact of a technology on a market, and the alternative uses of technology as a means of increasing overall shareholder value.

Mr. Agiato has co-developed courses and seminars for intellectual property and specifically trademark valuations and technology transfer, the appraisal and useful life of various intellectual property rights, and quantifying lost profits in litigation engagements. He has lectured nationally on a variety of intellectual property licensing issues for the American Society of Appraisers, Institute of Business Appraisers, New York State Society of CPA’s, American Institute of CPA’s (AICPA), Licensing Executive Society, American Intellectual Property Lawyers Association and the Practicing Law Institute. Mr. Agiato served on an AICPA Task Force responsible for developing a curriculum for CPA’s to follow in order to attain a Certificate of Educational Achievement (CEA) in Business Valuations and authored the section of the CEA programdealing with the valuation of Intangible Assets and Intellectual Property. In addition, he was the only non-lawyer appointed to the Board of Directors of the National Patent Board.

Mr. Agiato is the primary author for the AICPA’s initial Practice Aid on “Valuing Intellectual Property and Calculating Infringement Damages”, he has moderated a video course entitled “Valuation of Intellectual Property” and authored the accompanying course manual by the same name. Mr. Agiato served as editor for the book “Due Diligence for the Financial Professional” and authored a chapter in the book “From Ideas to Assets” published by John Wiley and Sons.

Mr. Agiato is the past chair of the Institute of Business Appraisers’ Education Committee and served twelve years as the organization’s northeastern regional governor. He received appointment as the Special Liaison between the American Institute of CPAs’ Business Valuation Committee and the American Society of Appraisers’ Business Valuation Committee. Mr. Agiato has testified on over 200 occasions as an expert witness on patent, licensing and valuations issues and has been a court appointed expert on over 60 occasions by 22 different judges in three different states.