Case Study: Intellectual Property (Patents & Trademarks) Licensing2018-11-01T20:22:42+00:00

Case Study: Intellectual Property (Patents & Trademarks) Licensing

Problem & Constraints

  • Large multi-market-product technology company with unused IP wasting over time and losing competitive value.
  • Desire to monetize the portfolio without jeopardizing current / future products
  • Historic behavior has demonstrated preference for allowing IP to expire rather than decide to out-license
  • Internal review determines untapped and non-strategic value should be reallocated rather than allow to expire.
  • Internal Business Development personal focused on higher priority activities


  • Develop plan to out-license existing IP in fields and application not of interest to client
  • Get Organizational buy-in beyond CEO directive
  • Execute on out-licensing if given go-ahead

Engagement Actions

  • Audited filed IP and ranked value to company & value to hypothetical market-place
  • Developed internal process to QC and authorize availability for out-licensing
  • Developed range of executable scenarios & minimum terms depending upon attractiveness ranging from simple license to partially funded spin-out


  • Executed on engagement through planning, process & straw-man terms
  • Transitioned execution process to a long-term internal BD members dedicated to task over the long-term

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