“New ways of identifying potential partners ”

Charles Timoney October 14th, 2014

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– INTRODUCTION

Having decided to enter into an active licensing programme, you are faced with the problem of how to identify potential partners and how to contact them.

I propose to examine some, hopefully, new ways of identifyingpotential partners.

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– NEW WAYS OF IDENTIFYING POTENTIAL PARTNERS (1)

“Inventor of the Month” awards:

-A good opportunity to obtain valuable commercial information from the inventor himself, or his superiors, which may enable possible partners to be identified.

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- NEW WAYS OF IDENTIFYING POTENTIAL PARTNERS (2)

Your own supplier of patented products:

-If the product in question is not strategic, you can offer a license to your own supplier in order to allow him to broaden his market.

-In some cases, this may also reduce the product price to your company in view of the higher production quantites.

-It is important that your database shows those patents which are exploited for your company by outside suppliers.

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- NEW WAYS OF IDENTIFYING POTENTIAL PARTNERS (3)

Provide a procedure for the payment of a bonus for infringement detection:

-A bonus is payable to any person (inventor or not) who detects an infringement by a third party of one of your company’s patents.

-The infringement has to be confirmed by the IP department;

-An approach can then be made to the infringer, offering a license;

-The bonus is paid, even when no approach is made to the infringer

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- NEW WAYS OF IDENTIFYING POTENTIAL PARTNERS (4)

Patents destined to be abandoned:

- Some patents in specific fields, which are no longer of interest to the company and are therefore destined to be abandoned, might nevertheless be of interest to third parties;

- For such patents, possible licensees can be identified by checking those patents against which your patent has been cited (preferably in category X or Y);

- This only really applies to groups of patents;

- Offer them to potential partner, explaining that they relate to a field which you know to be of interest to them;

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- NEW WAYS OF IDENTIFYING POTENTIAL PARTNERS (5)

“Citing patents”:

- This idea makes use of external databases to identify potential licensees;

- Select your own patent portfolio in the database (eg Orbit);

- Select those third-party patents against which any of your patents have been cited as X or Y;

- Collate these third-party patents by Applicant, and then in order of quantity;

- Contact the companies in question

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TO WHOM SHOULD YOU SEND YOUR OFFER?

- Ideally, to the IP specialist who deals with Licensing;

- Identify him from lists of Patent Specialists;

- Or from the representative shown on published patents (or via their Patent Attorneys);

- Lists of members of societies such as LES

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WHO ELSE SHOULD YOU SEND YOUR OFFER TO?

- The corresponding person to your Technical Expert;

- Your Technical Expert may be able to identify a suitable contact person;

- This gives a “two-pronged” approach which may be more effective

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WHAT DO YOU SEND TO THE POTENTIAL LICENSEE?

- Nothing which could be construed as being a threat;

- At least the patent (in an appropriate language);

- An indication of how the invention may be of interest;

- Commercial and technical information where available;

- Details of the actual device, if available

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WHAT ELSE MIGHT BE USEFUL FOR THE POTENTIAL LICENSEE?

- The potential advantages for him in using your IP;

- It is important to look at the IP from the potential licensee’s point of view

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SELLING THE PATENT(S) - 1

- In some situations, it can be advantageous to transfer ownership of the patent(s) rather than make it the subject of a license agreement

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SELLING THE PATENT(S) - 2 Possible reasons for a sale:

- The projected royalties are too small;

- The two companies are of widely different sizes;

- There is only one patent in question;

- The parties have been unable to reach agreement on the terms of the License;

- The Licensee needs an exclusive license but is unwilling to pay the higher fees

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LICENSE MANAGEMENT – (1)

- Your in-house patent database should indicate that a patent is the subject of a license;

- This ensures that the patent is not inadvertently abandoned;

- The database has to be kept up to date

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LICENSE MANAGEMENT – (2)

- It is useful to have a database for Contracts;

-Ideally, this should store each successive version of the contract

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LICENSE MANAGEMENT – (3)

- The Licensor has to obtain the correct annual sales figures from the Licensee, or, alternatively:

- The Licensee has to provide the correct annual sales figures to the Licensor – this is not always easy;

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LICENSE MANAGEMENT – (4)

- The Licensor has to determine to which budget the royalties are to be credited;

- The Licensee has to determine which budget will be responsible for paying the royalties;

– This is not always easy!

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Any questions?