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

Engagement

• 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

Results

• 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