Dealing in IP

Optimise the value of your business’s IP assets.

IP assets can be used in many ways to extract value. They can be sold, licensed, mortgaged and grown through use. Companies need to consider their own IP and decide how best to deploy it. This usually involves a mixture of activities and also interaction with third parties (e.g. licensees, third party owners of complementary IP who license them to the company, purchasers or joint venture partners).

When deciding whether to keep and use, license, collaborate or sell IP assets, companies need to consider a number of issues related to their own resources and the particular market they wish to access. These include attitude to risk; financial, skills and knowledge resources; timescale to be market-ready; nature of the products/services; and cost/pricing constraints.

We have advised businesses across many industry sectors on how to put themselves into the best position to secure a favourable return on investment in respect of their IP assets. This has involved ensuring clients have access to all the relevant IP they require for their projects, e.g. by ensuring the proper capture and protection of IP rights; acquiring third party IP rights through purchase or licensing; negotiating the sale of IP rights to third parties; negotiating licences/franchise agreements with third parties; and advising on the use of IP assets as security for loans.

Success stories

Licensing rights overseas

Our team advised a UK based major brand owner in the clothing industry on the licensing of its rights into the overseas markets. The brand owner exploits its brands in Europe and took the decision to explore other markets overseas through licensing and franchising models. We have been heavily involved in securing the relevant brand protection in all relevant markets.

Exploiting licensing opportunities

Our team advised a publishing company on a licensing strategy in respect of a categorisation system it had developed which had started to be used as a quasi-industry standard.

This involved our considering whether the categorisation system could be the subject matter of intellectual property rights, working out ways to increase their chances of successfully arguing this, and then developing a strategy relating to their approaches to third parties in the industry who were using the system.

Using IP to secure business financing

Our team advised an IP holder on the use of its IP portfolio as security for a multi-million pound bank loan facility.

This involved negotiating the debenture and related documentation with the banks and then ensuring the banks’ security interests were recorded against the relevant registered IP rights around the world (and subsequently cancelled when the debt was discharged).