Charles Timoney - London IP Summit

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“New ways of identifying potential partners ”
Charles Timoney
October 14th, 2014
– 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 identifying
potential 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?
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