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Leveraging IP Assets: Role of IP in Improving Enterprise Profitability
Leveraging IP Assets: Role of IP in Improving Enterprise Profitability
Leveraging IP Assets: Role of IP in Improving Enterprise Profitability
Leveraging IP Assets: Role of IP in Improving Enterprise Profitability
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Company’s name and business
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Evolution to Licensing in
Evolution to Licensing in
Evolution to Licensing in
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Leveraging IP Assets: Role of IP in Improving Enterprise Profitability through Direct Exploitation, Licensing, Franchising, and or Merchandising, and Developing Other Types of Strategic Business Relationships: Case Studies

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1Leveraging IP Assets: Role of IP in 22staff ITL identified the need for a
Improving Enterprise Profitability through product into which blood collection
Direct Exploitation, Licensing, needles could safely be contained, upon
Franchising, and / or Merchandising, and exit from the blood donor, in that way
Developing Other Types of Strategic minimising the risk of needle stick
Business Relationships: Case Studies injury. 22.
Shanghai 15 December 2004. I N N O V A T I 23First product. They designed a vessel
O N L A W PHILIP MENDES BRADLEY THOMAS into which blood collection needles would
(ASSOC) Level 3, 380 Queen St Brisbane retract In 1994 ITL applied for a utility
QLD, Australia Ph + 61 7 3211 9033 Fax + patent or petty patent (in Australia now
61 7 3211 9025 Philip@innovationlaw.com.au called an innovation patent) over their
Bradley@innovationlaw.com.au. 1. first product, the DonorCare Later
2Leveraging IP Assets to improve converted to a standard patent Has a
profitability. What does leveraging IP unique design Needle retracts into the
assets mean ? use IP Assets, to build vessel, protecting health care staff from
business relationships and opportunities the risk of needle stick injury. 23.
in that way achieving more with an IP 24First trade mark. DonorCare was also
Asset than if you didn’t have the the first trade mark DonorCare Trade Mark
relationship and in turn, to improve a was sought at an early time ITL identified
business’ profitability Outline: Looking the need to achieve product recognition at
closer at an IP Asset’s owner right to an early date It needed its potential
exclude others Looking at ways for sharing customers to be aware of its product, and
IP Assets and how taking an inclusive to recognise ITL’s products, over any
approach can improve profitability competing product. 24.
Emphasis on Case Studies: some of the 25Licensing option. ITL considered for
imaginative ways that IP Assets have been some years that its strategy would be to
leveraged to create new business license out the patent Licensing held many
relationships and increased profitability. attractions ITL could be a passive
2. licensor Collect royalties apply its
3Patent: right to exclude. Patent resources to developing new products. 25.
confers upon its owner the right to 26License manufacturing and sell
exclude others from exploiting the products. But greater profitability was to
invention the subject of the patent The be realised by selling product instead of
perspective of a patent owner, consistent licensing ITL decided to leverage its IP
with that idea, is that a patent has to be assets to Develop an alliance with an OEM
closely guarded, with the owner being manufacturer that manufactured product and
alert to others who may be infringing it, sold only to ITL Develop an alliance with
and who must be prevented from doing so global purchasers of its products. 26.
That is a very simple use of the rights 27License manufacturing and sell
conferred by a patent Patent owners often products. ITL. Manufacturer. Buyer. ITL
focus on their patent As barriers to accordingly decided to leverage its IP
entry, as tools to exclude others Rather Assets by moving away from licensing, and
than as tools for strategic alliances and instead licensing a contract manufacturer,
increased profitability. 3. and selling products. License to
4Patent: right to exclude ? proactive manufacture. Sell products back. Sell
inclusion. Patent owner sees the right to products. 27.
exclude as a means of recouping what may 28License manufacturing and sell
have been years of speculative investment products. By doing so Leveraged its IP
A patent owner has that right to exclude Asset to build a capability it did not
But it is a right which sometimes may have Created a strategic relationship with
result in a patent’s economic benefits not a licensee – who was licensed to
being maximised A patent may be used to manufacture only, and to exclusively
exclude others, but it can also be used as supply all product to ITL, and to no one
a tool to form strategic alliances, take else Leveraged in a way that achieved more
advantage of new opportunities, and in with the IP Asset, and more with that
that way maximise profitability Recouping strategic relationship, than if that
the speculative investment on the patent leveraging had not taken place, and there
may in fact be slowed down by the right to had been only a simple license. 28.
exclude. It might be recouped faster 29Other products. Platypus Similar to
through using IP assets as tools for new DonorCare, but designed specifically for
opportunities An IP asset can be leveraged AV Fistula Needle sets Also designed to
to partner with other businesses in a prevent needle stick injury Key to its
strategic way to create new business success has also been Patent protection
opportunities. 4. (Niche, global, innovative, Protectable)
5Licensing and concurrent IP rights. Trade Mark Market recognition and loyalty.
Licensing IP is a tool An owner of an IP 29.
asset may grant to another person rights 30Other Products. Blade Guard Stitch
to use the owner’s IP An owner of IP may cutter, reducing risk of injury Flipper
do so consistently with retaining their Stripper Strips blood tubing Samplock
own exploitation rights How? By the use of Vacuum tube for blood collection Adopted
tools that permit concurrent exercise of the same strategy. 30.
IP rights Sole Licenses – a shade of 31Evolution to Licensing in. Having
exclusivity Field of Application established own manufacturing facility, it
restrictions Territory restrictions. 5. has licensed in other people’s technology
6Exclusivity: Sole License. to add to its product range That is, has
Exclusivity: Exclusive. Sole. Non licensed in other people’s unique patents
Exclusive. One Exploiter – the licensee. or designs to produce and sell Leuko Cart
Two Exploiters – owner and the licensee. A portable cart for blood bags Baby Leuko
Numerous Exploiters – owner and numerous Cart A smaller version Adopted the same
‘ees. 6. strategy. 31.
7Exclusivity: Sole License. A mechanism 32One IP Asset leveraging another. What
for concurrent rights to a patent Owner does it mean to leverage one IP Asset with
may exploit rights, and at the same time another ? You have one IP Asset You have a
grant exploitation rights to a licensee: a second IP Asset You leverage one IP Asset
sole license Two persons in the market with another, and maximise the financial
exploiting the same patent – as return, than if you had not done so. 32.
competitors Why would a patent owner with 33Patent and Trade Mark same product.
the right to exclude others grant a Patent term will expire after 20 years
license to a person that would be its from application date Trade mark will
competitor ? Surely that will decrease continue indefinitely, while registration
profitability, not increase it ! Doesn’t fees are paid If directly exploiting a
that defeat the purpose of having the patent rely on patent to exclude others
right to exclude others granted by a that may reverse engineer But in the
patent ? Yes, but not necessarily always. meantime promote the trade mark for that
7. product Generate customer loyalty for the
8Exclusivity: Case study in increasing product The patent may expire, but sales
profitability by granting a sole license. may continue, enjoying the competitive
Technology developed by testing laboratory edge brought about by the continued trade
– Company A in Australia Company A had mark and customer loyalty Leverage the
clients globally But its global clients patent to add value to the trade mark and
amounted to less than 1% of the global improve profitability beyond the patent
market place Did not have a global term. 33.
marketing network – and did not want to – 34License Patent and Trade Mark
preferring to remain “boutique” Company B together. The challenge: To do the same
in Europe A competitor to Company A But a when licensing a patent Persuade licensee
significantly larger company, with a to also take a license of a trade mark,
significantly larger share of the global and require only that trade mark to be
market place Had the resources to market employed in the exploitation of the
widely, globally, and maximise the use of patented product Have two royalty rates:
the technology Choices: Exclude all others one in the patent license, the second
from the technology – and make minimal royalty rate in the trade mark license
financial returns License a competitor Collect two royalties for the life of the
with greater capability and maximise patent After the patent expires continue
financial returns. 8. to receive royalties pursuant to the trade
9Fields of Application. Some mark license. 34.
technologies lend themselves to different 35License Patent and Trade Mark
uses. These are called fields. field of together. Most patent licensors do not
science particular application industry by leverage the value of their Patent IP
industry Some licensees have expertise / Asset in this way A licensee will seek to
marketing networks in some fields but not persuade the licensor that the goodwill
all. Would you exclude others from generated from the sale of the product
exploiting your patent in all fields, even should belong to the licensee Often that
those fields, applications, industries argument will succeed But a licensor that
outside your own capability to service ? succeeds in leveraging one asset against
9. the other in this way will earn royalties
10Fields of Application. New formulation for a period well after the expiration of
for scratch resistant plastic Possible a patent It will be easier for a licensor
fields: Exterior pipes – plumbing industry to do so when licensing on a Territory by
Spectacles – optics industry Furniture – Territory basis. It will be easier in that
moulding industry Bottles for consumer case to require uniformity in trade marks
products – injection moulding industry Car across all Territories. 35.
parts and trim – motor vehicle industry 36Case study: leveraging one IP Asset
Boat trim – boating industry. Would you with another: Trade Secret and Trade Mark.
keep all fields to yourself and exclude Company A had a formulation for an
others, even if you had no capability nutrient additive to chicken feed that
other than in one field only ? No, you resulted in chickens producing eggs
would license out remaining fields Would enriched with Omega 3 Omega 3 a fatty acid
you license optics industry applications that helps prevent heart disease found in
to a plumbing manufacturer ? Would you oily fish such as sardines etc found in
license motor vehicle applications to an relatively few foods Ironic that you eat a
optics manufacturer ? 10. fatty product like an egg (10g of fat in
11Fields of Application. Retain rights the yolk) to be able to more readily
you want to exclude others from And access the Omega 3 fatty acid Challenge:
leverage your IP by licensing out other The formulation was not patented, but was
fields of application to others, in that protected only by trade secrecy. It had
way maximising your own profitability. 11. been commercially used, so could not be
12Territory. The most familiar way to patented Financial return sought on a long
leverage an IP Asset Patent owner keeps a term basis, by reference to the price
territory that it sells its products in premium that would be charged by egg
licenses patent to licensees to sell in producers for Omega 3 eggs. 36.
other territories that the owner cannot 37Case study: leveraging one IP Asset
service Could be country by country states with another: Trade Secret and Trade Mark.
or other geographically distinct areas Challenge: If a know how license was
within a country Rather than excluding entered into, requiring royalty payments,
others from the IP Asset It is made its term would cease, and royalties would
available to strategic partners that cease, as soon as the formulation entered
exploit it, and pay a royalty. 12. the public domain As there were to be
13Leveraging IP Asset in a Strategic number of licensees of a know how license,
Alliance. A strategic alliance occurs by Territory, there was an increased
where two or more companies align possibility of the formulation entering
themselves to each other They may be the public domain, and even an incentive
competitors They might also be in entirely for the formulation to leak It was sought
different industries But they combine to get a reach through royalty based not
their efforts or their resources for their on the quantity of nutrient added to feed,
mutual benefit They may even make their IP but based instead on the premium price for
Assets available to each other Usually sales of Omega 3 enriched eggs. 37.
more than just a license – a closer more 38Case study: leveraging one IP Asset
intimate relationship than just a license with another: Trade Secret and Trade Mark.
They leverage their own IP Assets to form Strategy Grant a license to a feed
a partnership with another person that producer to make nutrient and sell it to
contributes its IP Assets, with a common egg farmers – but only those egg farmers
objective of both benefiting from each that had entered into a trade mark license
other’s IP. 13. Grant trade mark licenses to egg farmers,
14Strategic Alliances Combining IP in that way permitting them to buy the
Assets to create new IP. Company A is feed additive Farmers must use trade mark
conducting R&D on a new formulation to promote any Omega 3 eggs, those eggs
for a scratch resistant plastic for making must meet certain specifications, and
plastic furniture Company B is be farmers must pay a royalty on Omega 3 eggs
conducting R&D on a new formulation sold pursuant to the trade mark license
for a scratch resistant plastic for making for the agreed term, and its renewal
motor vehicle trim Both have valuable IP Discourages possible leakage of the
in the area have patents They decide that formulation Ensures royalties are
collaborating together combining their connected to the trade mark license, which
resources combining the inventiveness of is likely to have a longer life than a
their staff may lead to developing a know how license of a formulation Success
formulation that would suit them both. 14. in leveraging one IP Asset against
15Strategic Alliances Combining IP another. 38.
Assets to create new IP. They enter into a 39Leveraging occurs by grant of rights,
Collaboration and license agreement To not excluding. Leveraging IP assets as
collaborate and create New IP hat will be described occurs by licensing in all of
jointly owned Company A grants to Company forms Using an IP Asset, and instead of
B a license Of Company A’s patents Of excluding others from its use, proactively
Company A’s interest in the New joint IP going out and finding other users who will
In the field of motor vehicle trim and want to use that IP Asset But a word of
accessories Company B grants to Company A caution: Leveraging by licensing occurs
a license Of Company B’s patents Of because a licensee does actually exploit
Company B’s interest in the New joint IP the licensed rights If a license is
In the field of furniture Both have exclusive, and the licensee does not
leveraged their own IP assets To create actually exploit the licensed rights, no
New IP To obtain access to the IP of the leveraging takes place at all A licensee
other, and the new IP, in their own field may seek a license to in turn exclude
of interest. 15. others. 39.
16Strategic Business relationships that 40Importance of performance obligations
can be formed by leveraging. Licenses are in a license. So often licenses are
at the heart of almost all strategic granted without consideration to
relationships where this leveraging of an performance obligations In the urge to do
IP Asset occurs License of a patent a the deal, and in the desire not to put the
trade mark A registered design Special relationship with the licensee under
types of licenses Franchising stress, performance obligations are
Merchandising. 16. ignored, or inadequately provided for What
17Franchising. A special type of license are performance obligations? Things the
A bundle of IP rights and contractual licensee must do in order to retain the
rights Trade mark A business system or license Things which if not done, can lead
process (know how) Group purchasing power to the licensor being able to terminate
Group advertising power The bundled IP and the license, and find another licensee
contractual rights are licensed, or instead with which to more profitably
franchised, to a licensee, or franchisee leverage the IP Asset. 40.
The originator of the IP rights leverages 41Types of Performance Obligations. Two
those rights by creating business types of performance obligations
relationships with franchisees that pay Obligations before the first sale
franchise fees, or royalties. 17. Obligations after the first sale. R &
18Merchandising. Another special form of D. Product in Market. 41. Deal Signed.
license Licensing Designs Characters First Sale. End of Term.
(movies, cartoons) Copyright works (art, 42Obligations before the first sale.
photograph etc) And allowing licensee to Licensor wants to know that the licensee
reproduce onto products, from clothes to Will continue R & D (if applicable)
children’s lunch boxes, back packs, and Will complete R & D (if applicable)
food containers Another form of leveraging Will expeditiously start and travel the
an IP Asset by extracting maximum value by regulatory pathway (if applicable) Not
sharing its use with others. 18. “shelve” the IP Commercialisation
19Case Study: ITL Corporation Pty Milestones Milestones that a Licensee must
Limited. An Australian Company Commenced achieve to continue to be licensed Not
operations in 1994 Seen it grow from the achieve milestone – license is terminated.
two founders with no other staff, to over 42.
170 staff in four countries from no IP 43Commercialisation Milestones.
assets to 12 patent families Over 100 Examples: If more research is needed to
granted patents worldwide 11 Trademarks bring products to a market ready state,
registered in over 25 countries From a the completion of that research Produce a
company with no capital, to a company prototype Conduct a trial Complete
listed on a stock exchange in late 2003. construction of Pilot Plant Complete
19. construction of Production Plant Obtain
20Company’s name and business. ITL any regulatory approval Employ a person
stands for Innovation Technology Licensing with particular expertise Grant a sub
ITL’s name itself indicates that IP Assets license to a partner in Key Market First
are a major focus of its attention Its sale anywhere in the world Dates by which
name suggests that licensing was its these must be achieved Mechanisms for
intended business model. 20. extension of time Termination if not
21Company beginnings. Joint Managing achieved in any extended time. 43.
Directors Bill Mobbs (computer consultant) 44Obligations after the first sale.
Jag Dillon (research scientist and then Usually require minimum sales revenue /
TGA (FDA) official) Both decided to units sold Expressed as worldwide / or
undertake a Masters of Business markets If failure in a market Exclusivity
Administration and met at University At converts to non exclusivity Or termination
the time were aged in early 30s They both In the market concerned, without affecting
decided that the business that the wanted other markets Pharmas and biotech - none
to form needed to be niche global of that is acceptable Will be prepared to
innovative protectable. 21. make minimum annual payments. 44.
22Identifying the need. In 1993 - 1994 45Conclusion. Identify IP Assets that
the risk of AIDS infection was receiving lend themselves to leveraging for greater
global attention, as was Hepatitis C profitability Think of IP Assets as tools
infection Healthcare professionals They are tools not necessarily to exclude
(doctors, nurses, etc) were particularly others from They may be tools to share
concerned about the risk of accidental with others, and in that way maximising
infection, given that they daily dealt the profitability of the IP Asset
with patient’s blood At about this time a Leveraging in this way is accomplished by
retractable syringe entered the market The licensing in all its forms But don’t
blood collection agencies (Red Cross and forget to include performance obligations
others) were particularly concerned about in the license. 45.
accidental needle stick injury to their
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Leveraging IP Assets: Role of IP in Improving Enterprise Profitability through Direct Exploitation, Licensing, Franchising, and or Merchandising, and Developing Other Types of Strategic Business Relationships: Case Studies

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