A lot of the Intellectual Property world, for example trade mark agent firms and patent attorney firms, busies itself establishing intellectual property rights. Often, these firms’ customers are commercial companies or individuals seeking to develop their respective areas of businesses or obtain a degree of monopoly in their respective areas of business through the use of intellectual property. The intellectual property rights may be used to control, at least to an extent, activities of third parties in the respective areas of business, determined by the scope of rights provided by the intellectual property.
However, as is well known, IP rights may be sold or licensed to third parties. In a manner mutatis mutandis physical products, an owner of intellectual property may engage in negotiations with a potential buyer, wherein the owner offers the intellectual property as consideration to the buyer, for example for a time-limited period or a full temporal extent of the intellectual property, in return for payment or other consideration, for example in a cross-licensing situation.
Superficially, aforesaid seems a straightforward transaction. In reality, matters are very much more complex, requiring detailed investigations to be made.
The intellectual property rights need to have commercial relevance, namely they need to have within their scope of legal rights something of commercial value. For example, in the case of patent rights, patent claim scope needs to include at least one essential element that matters commercially to the buyer. As a further example, in the case of trade mark rights, the trade mark needs to impart a benefit to the buyer, for example providing an indication of verification of quality or origin when used in the course of business.
The owner of the intellectual property rights may not necessarily know the value of its intellectual property. In order to determine the value requires market research, analysis of likely benefit of the intellectual property rights to the buyer, as well as an assessment of whether or not the technology to which the intellectual property rights relate is soon to become obsolete or superseded by newer technological innovations.
A further consideration is that governmental intellectual property offices are not infallible, as they are implemented by human beings. For example, during patent substantive examination, patent offices are usually very effective at searching patent literature, but are often less effective when assessing the prior art significance of scientific papers that may often be very diffuse and indeterminate in their subject matter. The ownership of the intellectual property being correctly in the name of the owner also needs to be verified for due diligence purposes.
In the case of trade marks, there is a need to verify that there is not a risk of a given trade mark right being cancelled as a result of acquiescence, namely non-use in the course of business within a five-year period.
The aforesaid detailed investigations cost resources to implement, wherein the amount of due diligence implemented needs to have a bearing on the sales value of the intellectual property to the buyer. In other words, the thoroughness and extent of the investigations, and hence the cost of due diligence required to be implemented, has to be reasonably compromised to a degree that makes the intellectual property attractive to the buyer. Thus, a balance has to be struck when undertaking the investigations.
In the intellectual property field, there are “patent trolls” who amass large portfolios of patents, wherein the individual value of patents in the portfolios is aggregated in amongst other patents. However, experience has shown that many patents are relatively worthless, whereas specific individual patents may be key assets. For example, one of Nokia’s most valuable patents was “keyboard lock” for mobile telephones, namely a simple invention to understand but greatly appreciated by users of the mobile telephones.
At V24, we have many years of experience providing detailed investigations to support the sale of intellectual property. We understand both the intellectual property aspect as well as the market aspect. Conventional trade mark agent firms and patent attorney firms tend not to be interested in providing such detailed investigations, as it requiresd skills in commercial markets rather than merely intellectual property law. Thus, V24 is able to provide you with a fully comprehensive service, both in respect of establishing intellectual property rights as well as evaluating their commercial relevance, sale and licensing value.