IP Due Diligence
Burgundy Gold Ltd are able to help you with all aspects of Intellectual Property Management, including IP Strategy development, Freedom to Operate, and IP Valuation.
Whether you are a loan inventor, a new or existing company or a University Technology Transfer Department intellectual property is key to the successful commercialisation of technology.
The Benefits of IP Protection
A patent gives you the right to stop others from copying, manufacturing, selling, and importing your invention without your permission. The existence of your patent may be enough on its own to stop others from trying to exploit your invention. If it does not, it gives you the right to take legal action to stop them exploiting your invention and to claim damages.
The patent also allows you to:
- Sell the invention and all the intellectual property (IP) rights
- License the invention to someone else but retain all the IP rights
- Discuss the invention with others in order to set up a business based around the invention.
Intellectual Property Strategy
A succesful intellectual property strategy can help a business to deliver their overall objective of maximising protection and wealth creating opportunities through direct exploitation of intellectual property and/or through licensing and sub-licensing.
The basic process begins with a baseline audit of a bsuiness's current patent portfolio, patents granted, patents licensed and patent application, trademarks and design drawings as well as intangible assets such as know-how. An internal valuation of each piece of IP will be made in order to allocate resource and identify those areas where further patent protection is required.
Together with a careful management of IP costs, new patents covering novel processes, process improvements and applications into the future can be the basis of business survival and growth.
This process can help to engender an innovation culture within a business as the relevance of the strategy to the future of ther business is disseminated. Where appropriate all staff can be encouraged to contribute ideas and inventions backed up by a process giving due recognition of each individuals contribution.
Freedom to Operate
'Ensuring that the commercial production, marketing and use of their new product, process or service does not infringe the intellectual property rights of others'.
A major risk for any company, particularly companies in technology sectors in which there is extensive patenting, is that the commercialisation of a new product or technology may be blocked by a competitor holding a patent over a technology that is incorporated in the new product. In extreme scenarios, there may be "essential patents" that are indispensable for developing certain types of products or for meeting certain technical standards.
Patent litigation can be an expensive, uncertain and risky business, and, clearly prevention is always better than cure.
Evaluation of the competitive patent position will allow clear business decisions to be made, for example:
- Carry on with exploitation without fear of litigation
- License or cross-license a key patent(s) in order progress business plan
- Modify R & D programme in order to invent around existing IP
- IP Dossier in order to deflect threat off litigation/injunctions
IP Valuation
Value assessment is not an accounting operation but rather an attempt to assess information relating to an IP or business project, such as development costs, expectation of income, comparative advantages and market data, for the purpose of making better strategic decisions. The valuation process can take into consideration the impact of IP not only on projects and products but also on the company’s operation and on its competitive position as a whole.
Benefits of value assessment
Targeted valuation of IP, technologies and products can generate significant awareness and incremental value throughout the organisation by helping companies to:
- Choose between market opportunities;
- More effectively protect and leverage the IP portfolio and important technology necessary to capture innovation and future growth;
- Develop a strategy for IP development and protection that is closely aligned with the company’s overall strategic goals;
- Identify un-tapped value and revenue opportunities;
- Compare and select projects for the best allocation of the development budget;
- Better utilise the IP portfolio through various commercialisation avenues such as licensing, donation, joint ventures, divestiture, transfer to suppliers, set-up of subsidiaries, spin-offs, etc.
- Justify a return on investment for technology and patents;
- Reflect overall company value more accurately on financial statements.
Identifying intangible assets
The categories of intangible assets most commonly valued include:
- Industrial Property: patents covering products or processes, trademarks and service marks;
- Brands: marks, consumer goods, corporate names and identity;
- Copyrights: computer software, documentation of processes and business methods, etc;
- Publishing Rights: magazines, books, film and music rights;
- Licenses: television and radio, franchises, distribution rights; and
- Know-how.
Intangible assets protected by industrial property laws are documented and disclosed to the public. Valuable know-how are generally held as trade secrets within the organisation and disclosed to licensees and partners confidentially.
(extract from Sylvain Roy's - How Much is Your IP Worth)