Expert Advice

Commercialisation of intellectual property

B2B Editor10 February 2015

Intellectual Property rights (IP) within your business such as trade marks, copyright, patents, designs and confidential information are valuable intangible assets that can generate your business income if effectively commercialised.

Knowing and understanding what IP your business has and how it can be licensed, outsourced or otherwise dealt with is an important step in the commercialisation process. Simultaneously, it is important to know and understand the scope of your rights to use any IP created or owned by third parties (or indeed, what licenses you may need to obtain from 3rd parties). The most effective way to understand what IP exists in your business, and what licenses you have or need, is to conduct an IP audit.

An audit of your IP can provide a clear picture of what is owned, what is licenced, and what licenses may need to obtained in order to effectively and safely commercialise your products or services. Such audits may also identify dormant or under-utilised IP, or identify IP which needs further or better protection.

With certainty of ownership and licensing conditions in place, strategies for appropriate systems, vehciles and models to generate revenue from that IP can be implemented. This in its broadest sense is called ‘IP Commercialisation’.

The form of commercialization implemented may take many forms depending on the specific products or services, state of the market and relevant threats and opportunities. A robust commercialisation agreement between your business and any third party, whether you are granting rights to use your IP or even if you are considering moving manufacturing or other supply chain processes offshore, should focus on the appropriate licensing conditions (including territory, exclusivity, term, royalties, limits on field of use etc), together with supporting legal provisions relating to any agreed limits on liability, indemnities, warranties, termination rights, and consequences of termination (including any obligations to return materials plus any agreed restraints, if relevant).

There are fundamental licensing and legal provisions which apply to most forms of commercialisation agreements whether the commercialization vehicle is through a franchise agreement, distribution agreement, joint venture agreement, manufacturing agreement, software licence, or licence to use training materials, or other similar arrangements.

It should be noted that commercialisation arrangements and relationships should not simply focus on the IP or commercial provisions in isolation. It is also important to consider (and where necessary obtain advice on) associated issues such as compliance with competition / consumer laws and other regulatory frameworks.

Commercialisation of your IP can be one of the most important things your business does. It follows, that it is important that you receive specialist advice and assistance at all stages.

At ARETE Group, we have a team of experienced Intellectual Property and Commercial Law specialists who can assist your IP, commercialisation and contractual needs.