Commercialisation of Intellectual Property rights involves strategies for delivering your products or services into the market place. The most appropriate strategy may depend on a number of factors including existing business capabilities, third party skills and resources, access to finance and channels to market.

Commercial Partners

Intellectual Property rights can be commercialised with or without a commercial partner.

Written contracts are an important part of commercial transactions in that they articulate the respective obligations and rights of the parties and importantly provide a mechanism in the event that things go wrong. Experienced lawyers can anticipate the worst case scenarios and know the best way of minimising the negative impact of a rogue or underperforming business partner.

Licensing is a very common form of Intellectual Property commercialisation.  It essentially allows a third party to step into the shoes of the Intellectual Property rights owner to use the Intellectual Property on certain terms and conditions.  Licensing can be a wonderful tool for achieving business growth particularly if the Intellectual Property Rights owner does not have the skills or resources to exploit the IP to its full potential. Licensing is creative in that the commercialisation can be divided up by terms such as field, product category and territory.  Further, licences may be on an exclusive or non-exclusive basis and may contain performance obligations / incentives.

A franchise is also a form of license and a popular vehicle for huge potential growth.  Intellectual Property is at the core of franchising in that the Intellectual Property Rights owner (franchisor) licensees Intellectual Property (typically trade marks, copyright works, marketing, know-how and business systems) to the franchisee.  It is critical that the housekeeping for the Intellectual Property rights is in order and Gestalt can assist Intellectual Property rights owners with comprehensive IP protection and compliance with the Franchising Code of Conduct, the mandatory industry code that applies to the parties to a franchise agreement.

Many Intellectual Property Rights owners appoint distributors for a particular market.  This can be a very happy arrangement conferring great financial benefits to the Intellectual Property Rights owner and the distributor.  However, case law is littered with numerous disputes between Intellectual Property Rights owners and their appointed distributors, particularly in connection with ownership of trade marks.  A tight contractual agreement is critical for clarifying the respective rights and obligations of both parties.

Similarly, tight contracts are warranted when entering into arrangements with partners for production and manufacturing.

Intellectual Property can also be commercialised through a start-up company with venture capital or as a joint venture with established businesses.

Assignments

An assignment is essentially the sale of Intellectual Property rights in that ownership transfers to another (in contrast to conferring a right to use as with an Intellectual Property license).   Sale is sometimes the ultimate goal in the development of the Intellectual Property and lump sum compensation may be preferable to royalty payments.

Assignments require careful legal analysis and drafting as there may be tax implications.

Technology

Gestalt provides specialist services in technology, in particular in the areas of software licenses, hardware and software procurement, End User License Agreements (EULAs), software development, website development, Software as a Service (SaaS), privacy and social media.

Confidentiality Agreements and Trade Secrets

Confidentiality agreements impose an obligation of confidence on another to prevent them from using and disclosing secret knowledge / information.  The agreements are commonly called a Non-Disclosure Agreement (NDA).  There are many NDA templates floating around the market place.  However, contrary to popular belief, there is no one magic universal agreement and these agreements need to be carefully prepared for the purpose.  The context and purpose will have a significant impact on the type and scope of the NDA and whether the potential receiver of the information will sign the agreement.

Trade secrets are another form of Intellectual Property and also a strategy for protecting Intellectual Property.  Every creator should consider the threshold question of whether and when to disclose their creation (in conjunction with the rewards the Intellectual Property system confers for disclosure) or treat the creation as a trade secret.

A significant factor will be whether it is difficult to copy of reverse engineer the product or process.

Well drafted agreements assist in protecting a trade secret.