Commercialisation & IP license management

Our client is a technology start-up, with a unique, world-beating technology for a number of different applications in different industries.  With the breadth of possible applications, the client decided to implement a licensing strategy for its invention, rather than try and compete in each of the industries itself (and almost impossible task for a start-up).

Our first engagement was to establish a strong portfolio of intellectual property assets, giving confidence that discussions with third parties would result in licensees rather than competitors.  That portfolio consisted of patents, trademarks and trade secrets, which we protected with appropriate practical protections and confidentiality agreements.

Due to the innovative nature of our client’s invention (approaching a standard, traditional problem from a totally different perspective), there was some concern that even initial discussions would start potential licensees down a path of thinking which, if taken to its ultimate conclusion, might result in blocking our client from further development of its technology.  It was therefore crucial to ensure that where potential licensees were permitted to test our clients invention, any IP which resulted from those evaluations, were assigned back to our client.

Different industries and applications for the technology meant that different commercial considerations needed to be applied to the licensing structure.  For example, the unit price in a low cost of sale higher volume industry (such as consumer electronics) was simply uncommercial if applied to a higher cost of sale lower volume industry (such as medical devices).  The task therefore was to assist establish different licensing regimes which were both legally sound, but also commercially justified and easily explained to licensees.

Once a licence framework is established, there needs to be a system to manage it, from the commercial perspective (including sales to reporting) to retention and management of legal documentation.  Some of the industries being targeted would have many different original equipment manufacturers all licensed to implement our client’s technology in its own projects, so the system needed to scale also.  Our document management system is the perfect choice to build a client specific process management system and design workflows around it.  A customised secure platform for the client to manage discussions with each potential licensee, access standard template contracts and other documents and retain draft and final versions of each contract allows periodic reporting and progress evaluation and regular reassessments of the commercialisation strategy.

An initial investment in defining a clear licensing structure, managed using an online document management system, turned a complex process into a manageable one.

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