The Business of IP – Understanding and Creating Value: Part 5 – Negotiations

In Uncategorized

27 October, 2021

In this six-part series, Anders Isaksson explores some of the critical factors and motivators for why companies, small or large, should obtain intellectual property. The aim is to help you understand when and how you can create value from IP, especially when considering a company’s long and short-term goals.

In the previous article in this series, we considered spin-offs – the internal division of the business unit or product or whatever the split is going to be and how having dedicated intellectual property (designs, patents or trademarks) for the spin-off will make it easier to perform several functions later down the line like valuations and certain commercial matters.

This part considers negotiations and how you can use your intellectual property (designs, patents and trademarks) as a bargaining chip between two or more parties (small or large).

Going into any negotiation you should be transparent and fully comprehend what you are bringing to the negotiation table. This requires a detailed understanding of what you own and conducting internal due diligence on your rights and filings.

In order to prepare yourself for the negotiation, you could consider any of the following steps to maximise your intellectual property rights. Consider working with experienced counsel to see if there is anything you can do before the negotiations begin to enhance the IP rights you own. Some key questions to ask:

  • Is there or do you need to update your nondisclosure agreements?
  • Have you protected or has your brand logo evolved over the years and is it still covered by any initial registrations?
  • Do you have business processes that could be protected as know-how or trade secrets and should not be discussed in the negotiations?
  • Are all your trade secrets agreements in order and are key people aware of the trade secrets?
  • Are there inventions that could benefit from patent protection, and should they be protected before the negotiations?

You should not only be transparent on what you own and have registered in the shape of IPRs but also the methods you used to derive at what you own and what is included in the portfolio. Essentially you need to be organised – with the results and your process. This shows a high degree of professionalism and will give you a sense of completeness when you make it to the negation table.

Take time to research the other party – find out what they are interested in, what other negotiations they might have been involved in recently. Utilise this knowledge to your advantage in how you tackle maximising your IP rights, but also how you present what you own.

Lastly, do not be afraid to get specific. When you are clear on what you own and its value – you can bargain for parameters that will benefit you. Things to consider are exclusivity, nonexclusively, territory and scope.

If you have any questions on negotiations or how to maximise the value of your IP portfolio, please reach out: anders.isaksson@awa.com.

Stay tuned for the sixth and final article in this series – The Costs of IP (looking at what each type of IP right can cost and when it makes business sense to protect that IP).

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