Manging Intellectual Property and the Intellectual Property Commercialisation Process

1. Creating Value from Intellectual Property:
Legal and Contractual Aspects
Rodney D. Ryder
Rodney D. Ryder
Scriboard
1

2. Creating Value from Intellectual Property:
Part II – General Intellectual Property and Legal Issues
• Law and ‘Competitive Advantage’
• Compliance as ‘Strategic Strength’
• The ‘Intangible Edge’
Part II – The IP Agreement: Defining and Strengthening
Relationships
•
Best Practices
•
The IP Agreement
Rodney D. Ryder
Scriboard
2

3. The Intellectual Property Management System
•
Identifying the Opportunity – the business and the role of IP [the
enabling role of IP]
•
Invent – Create an Invention – Ideate and Harvest
•
Screening – Pick and Choose among Inventions
•
The ‘Decision’ – to file or not
•
‘Make’ [or buy] – the Facebook Strategy [create internally, buy
pre-existing IP, commission an external source]
Rodney D. Ryder
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4. Capturing and Harvesting Value
•
Property – penalises monopolies [in general]; liberal in granting
‘legal monopolies to encourage innovation and development’;
•
Value Capture – the methodology – [a] ‘productize’ the patent;
[b] ‘monetize’ the patent; [c] ‘litigate’ the patent; [d] ‘positioning’
– use the patent for competitive blocking
•
Legal capabilities – specialised legal capabilities [resources and
skills] allows us to spot opportunities, take initiatives and defend
against legal actions
Rodney D. Ryder
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5. ‘Five Factors’: the legal touchstone
•
The Merits;
•
Public Legitimacy;
•
Strategic Position;
•
Resources;
•
Access
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6. Level One – Defend Position
•
Ensure that IP is identified and protected
•
Create processes for IP generation
•
Create processes for enforcing IP [including litigation]
•
Create educational programmes regarding IP and the link to business
value
•
Best practices – [a] auditing what you own; [b] Obtaining and
Maintaining IP; [c] Building IP Awareness; [d] Defending the IP
Portfolio
Rodney D. Ryder
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6

7. Level Two – Manage Costs
•
Relate the IP portfolio to the business [the test of relevance]
•
Create an Effective Screening Criteria
•
Manage the Portfolio in a Cost Conscious Manner
•
Decisions – ‘make versus buy’
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8. Level Three – Capture Value
•
Define the Value to be obtained from IP
•
Develop the Strategy to Capture Value in terms of – [a] arenas –
where will the organization be active? [products, markets, segments,
geographic areas, core technologies]; [b] vehicles – how will it get
there? [internal development, joint ventures, licensing/franchising,
acquisitions]; [c] differentiators – how will returns accrue? [lowest
costs, premium pricing]; [d] stages – in what sequence the
organization act? How fast? [e] success measurement – how will a
victory be measured? [image, price, styling, product reliability]
•
Organize to Capture Value
•
Develop Metrics for IP reporting
Rodney D. Ryder
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9. Level Four – Synthesize Opportunities
•
Understanding the Relationship between Invention and Innovation
•
Managing IP Risks and Trade-Off – [a] innovation risk [technology
risk, alternative/disruptive technology risk, adoption risk, execution
risk, market risk, infringement risk]; [b] ‘environmental risk’ [judicial
risk; legislative risk; regulatory risk]; [c] intrinsic patent risk [validity
risk, enforceability risk, scope risk, design-around risk]
Rodney D. Ryder
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10. Level Five – Shape the Future
•
Define the Context – the comparative position, market share,
supporting R&D programmes
•
Influence the future [strategic alliances, joint ventures and/or
collaboration, marketing, public relations]
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11. Compliance as ‘Strategic Strength’
•
Comply with all laws – Start with ethics and start at the top;
•
Understand duties and the exposure to risk;
•
Implement appropriate controls and processes;
•
Prevent fraud;
•
Compete hard but fairly;
•
Convert constraints into opportunities;
•
Educate all members and distribute written policies
•
Be prepared to deal with compliance failures
Rodney D. Ryder
Scriboard
11

12. The Licensing Agreement: Defining and Strengthening
Relationships
•
Elements of a valid contract [as a legal instrument chosen to
define and govern the parties’ rights and obligations]
•
Contracting Authority
•
Define and Strengthen Relationships [meeting of minds, don’t
omit critical facts, don’t make promises you can’t keep, act in
good faith and deal fairly with others, put agreements in writing,
when you don’t understand it, don’t sign it]
•
Contracts permit the allocation of risk and reward
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13. Understanding the ‘Intangible Edge’
•
Capture the value of Intellectual Capital – Who owns the Idea?
•
Intellectual Property and Employee Incentives
•
Choosing the Best Protection – Patents, Copyright, Designs,
Trademarks and/or Trade Secrets]
•
Intellectual Property Questions – What is distinctive about our
product or service? Do we have any ‘secret ingredients’ in our
supply chain or final product? Brand protection – names,
colours or sounds? Original Text or graphics, training
handbooks?
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14. Owning and Protecting the Brand: the Franchisor –
Franchisee Partnership
•
Corporate Reputation, Brands, Trademarks and Domain Names
•
Brands and the importance of Trust
•
Managing Product/Service Liability Risk [Product Defects,
Implement a Product Safety Programme]
•
Consider Apologising for Mistakes
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15. The Franchise Ecosystem - I
•
Preamble
•
Interpretations and Definitions
•
Scope and specifications
•
Terms of payment
•
Taxes and duties
•
Force majeure
•
Defaults and liquidated damages
•
Audits
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16. The Franchise Ecosystem - II
•
Warranty
•
Indemnification
•
Intellectual Property
•
Termination
•
Confidentiality
•
Survival
•
Applicable laws
•
Effective date
•
Notices
•
Signatures
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17. Examining
Issues] - I
the
Franchise
Relationship
[Contractual
•
Is the license exclusive, i.e. granted to only one person, or nonexclusive?
•
Can the licensee sub-license?
•
Are there any limitations to the license e.g., geographic or territorial?,
minimum sales, minimum production requirement etc?
•
What is the amount, frequency, and form of payment, e.g. either lump
sum or by way of royalty, or both, or other payment schedule?
Rodney D. Ryder
Scriboard
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18. Examining
Issues] - II
the
Franchise
Relationship
[Contractual
•
Who pays for prosecution and maintenance of any IP (patents, trade
marks, designs)?
•
How are any developments, modifications or improvements to be
protected and who owns them? In whose name will the applications
be made in?
•
Are there specific clauses relating to co-operation of licensor in
matters relating to the IP such as infringement?
•
Who pays for any matters such as preparation of the license, recordal
of licensee, etc?
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19. Examining the
Issues] - III
Franchise
Relationship
[Contractual
•
Does the license contain a clause which allows for the license to be
cancelled if the IP is not being used?
•
What is the term of license?
•
Is there a right to renew?
•
What are the conditions of termination?
•
When are royalty or other payments due?
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20. Examining the
Issues] - IV
Franchise
Relationship
[Contractual
•
If sub-licensing is permitted what payment does the licensor receive?
•
What information is the licensee committed to providing to the
licensor?
•
What happens if the IP under which the license is granted is refused,
infringed, opposed, revoked or other?
•
Is copyright a consideration?
•
Does the licensee agree not to challenge the validity of the patent?
Rodney D. Ryder
Scriboard
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21. Examining
Issues] - V
the
Franchise
Relationship
[Contractual
•
Does the licensor agree to provide essential “know-how”?
•
What provisions for any “hardware”, should the license be
terminated?
•
How will any disputes be resolved?
•
What happens in the event of death of one of the parties?
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22. Any questions?
Rodney D. Ryder
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23. Legal Services
Technology, Media and Communications
Technology, Media and Communications
Structuring the Franchise Agreement:
Legal and Contractual Aspects
Rodney D. Ryder
Scriboard
rodney@scriboard.com