Serving a Global Audience from Positions of Trust
We provide IP services to businesses based in UK and in other countries, although most of our experience is with UK, USA, Canadian and Australian clients.
Many clients are companies listed in a stock market index. We’ve also worked with private companies, particularly technology companies in the SME sector. We’ve enjoyed working with entrepreneurial private individuals whose innovations can often turn into new businesses or licensed products.
We’re used to business contexts where IP is a crucial asset, a commonplace situation with early stage technology companies, who may have PE or VC representation on the client board.
We’ve been placed in unusually trusted positions by clients, dealing with issues beyond the role of a typical professional expert, sometimes working at Board level. For example:
- For an emergent pharmaceutical company, we participated on the client’s selection panel in the selection of other professional advisors.
- For another company, we attended CRO presentations reporting clinical trials progress to the client Board.
- In a number of IP disputes, we’ve contributed to client press releases.
- We’ve interacted directly with Private Equity and Venture Capital stakeholders in client businesses
- We’ve been mentor to senior in-house IP department management.
IP Services with Global Reach
IP is a global business issue. We’ve established a global network of connections with local law firm partners which specialise in IP matters. In major jurisdictions, and in a good number of others, these relationships go back many years.
Administration of IP protection within the framework of international treaties reduces costs but adds complexity. At supra-national level, we try to maintain high level contacts in order to achieve better outcomes in taxing cases.
IP protection programmes with a wide geography can be organisationally complex. They also usually involve large £expenditures and uncompromising statutory deadlines:
- We’ve managed multi-national patent protection programmes, a significant number with immediate costs of £100k or more and protection on a global scale.
- We’ve implemented costly IP protection programmes funded directly from lenders/investors, demanding diplomacy and skillful communication with stakeholders.
- In a global trade mark protection exercise undertaken for a multi-national, we took on a liaison role involving a dozen or more subsidiaries outside the UK. This formed part of the client’s first steps to centralise its IP management.
Obtaining IP Rights with Insight
Obtaining IP rights is a core service. It covers patent procurement and procurement of other IP rights which have to be applied for; it also covers trade secrets and unregistered design rights which cannot be registered but rely on IP management techniques to validate them in readiness for possible assertion of the legal rights.
IP procurement is one of the more difficult areas of commercial activity which businessmen encounter. It can also be one involving significant expense. By our inputting tangible information and impartial opinion to the decision-making processes involved, there’s a greater prospect of a cost:benefit match; this will usually mean less rather than more IP expense. You should expect us to be as challenging as an NED on your board.
We recognize how busy management life can be be. To optimize the time clients have available, we provide effective management of the ongoing client-attorney interactions necessary during lengthy official application procedures. Where needed, we’ll provide crisp, comprehensive period summaries designed to inform the client board or management team.
Because of its on-going nature, IP procurement costs are one of the biggest issues in IP for clients. Financial forecasting for IP costs is not easy to do unless the time frame captured is moderate. However, this is not a sufficient reason for depriving clients of a benefit they have little difficulty obtaining in other areas of business expenditure.
We first introduced period £forecasting for a VC-financed private engineering company. The forecast was designed to serve both as a financial management tool for the client and as an instrument for issuing instructions on action to be taken – so providing layers of benefit:
- The client was able to budget
- The client could make informed and considered decisions on future action on a cross portfolio basis, rather than piece-meal against the clock
- The service provider could provide a better service, and neither client nor service provider needed to consume management time in after-the-event authorisation of unpredicted costs
Avoiding and Settling Disputes, not just Litigation Representation
We’ve acted in IP disputes involving individual IP worth £100m’s, many of smaller value, some at the frontier of the law.
Success rate has exceeded 75%.
We’ve learned that successful outcomes owe as much to preparation as anything. We’ve also learned that disputes are worrying for clients, and that we can help them manage those concerns by the way we conduct a dispute.
- A programme, over several years, in which a client’s rights were defended and his competitor’s attacked, enabled the client to remain market leader in a highly profitable healthcare area.
- Convincing energetic defence of a speculative patent for several years enabled the client to solidify its first mover position as a supplier to the furniture industry.
- In US trade mark litigation that should never have been started, we acted as informal mediator: we put the two principals in personal touch as a first step to a speedy commercial, fee-saving settlement that worked for both parties
- We acted for a client over 20 years ago in defending against one of the first patent “trolls” (before that term became part of the language).
- Thorough preparation of an infringement defense and skillful negotiation, the latter led by a senior legal representative of the client company, led to a highly economic licence agreement which enabled a factory construction plan in Europe to proceed
Careful, Legal, Commercial when we handle Deals involving IP
We’ve advised on many IP transactions, most with an international flavour, some involving comparable figures to those highlighted in IP Disputes. We’ve acted for small clients in deals such as licences with large corporations and also the converse.
Some of our IP transaction work has centred on aggravating factors such as doubtful title exposed in due diligence or dependency on release of assets from charge.
There can be surprises in IP transactions and due diligence:
- Clarity of IP ownership should be straightforward but sometimes isn’t. A technology company’s almost-in-the-bag investment round failed when due diligence indicated that title to the IP rights in question was unclear.
- Know-How can be crucial to a deal as it affects time to market:
- When a potential licensee became concerned that key members of an electrical engineering company clients’ management could not be trusted to give timely disclosure of the Know-How referred to in a proposed licence agreement, the deal was wrecked.
- Initially good royalty levels in a proposed patent licence agreement were acceptable to the licensee client in the first instance but were negotiated down to a fraction of the original as it became clear that the promised Know-How was of poor quality.
- Rarity in a licence offering can be valuable. Modest royalty levels offered to an SME client by an intractable global player were negotiated upwardly by 50% when it became clear that the offering was far more important to a planned market entry than first thought.