Duncan Bucknell's Case Studies

Commercialisation strategy and IP license management

duncan@duncanbucknell.com (Duncan Bucknell) — Tue, 05 May 2009 02:53:00 -0500

Our client is a technology start-up, with a unique, world-beating technology for a number of different applications in different industries. With the breadth of possible applications, the client decided to implement a licensing strategy for its invention, rather than try and compete in each of the industries itself (and almost impossible task for a start-up).

Our first engagement was to establish a strong portfolio of intellectual property assets, giving confidence that discussions with third parties would result in licensees rather than competitors. That portfolio consisted of patents, trademarks and trade secrets, which we protected with appropriate practical protections and confidentiality agreements.

Due to the innovative nature of our client’s invention (approaching a standard, traditional problem from a totally different perspective), there was some concern that even initial discussions would start potential licensees down a path of thinking which, if taken to its ultimate conclusion, might result in blocking our client from further development of its technology. It was therefore crucial to ensure that where potential licensees were permitted to test our clients invention, any IP which resulted from those evaluations, were assigned back to our client.

Different industries and applications for the technology meant that different commercial considerations needed to be applied to the licensing structure. For example, the unit price in a low cost of sale higher volume industry (such as consumer electronics) was simply uncommercial if applied to a higher cost of sale lower volume industry (such as medical devices). The task therefore was to assist establish different licensing regimes which were both legally sound, but also commercially justified and easily explained to licensees.

Once a licence framework is established, there needs to be a system to manage it, from the commercial perspective (including sales to reporting) to retention and management of legal documentation. Some of the industries being targeted would have many different original equipment manufacturers all licensed to implement our client’s technology in its own projects, so the system needed to scale also. Our document management system is the perfect choice to build a client specific process management system and design workflows around it. A customised secure platform for the client to manage discussions with each potential licensee, access standard template contracts and other documents and retain draft and final versions of each contract allows periodic reporting and progress evaluation and regular reassessments of the commercialisation strategy.

An initial investment in defining a clear licensing structure, managed using an online document management system, turned a complex process into a manageable one.

(Photo credit: dhammza)

Global branding & trade mark strategy

duncan@duncanbucknell.com (Duncan Bucknell) — Mon, 07 Apr 2008 12:00:00 -0500

The client was a large, multinational corporation with external legal counsel reading like a 'who's who' of top IP firms in the major jurisdictions. We were asked to take a step back and take a look at the overall intellectual property strategy as it applied to the company's brands and their management across the globe.

The initial steps were predictably to gather relevant information and to fully understand what outputs from the review would be most commercially useful in light of the company's business strategy. We had several meetings with key figures within the organisation one-on-one and in small groups to discuss issues and tease-out key aspects of the actual practices in place. These meetings were a great opportunity to explore current thinking and to understand potential roadblocks that might arise during the later implementation phase. With the client's blessing, external IP Counsel were involved as needed along the way.

The result for the client was several strategic alterations which increased effectiveness of the overall strategy and management of its brands and trademarks. The new system has smoothed the way for the internal team and external counsel alike. Day to day management of brands and trade marks is left to the internal team and external counsel as usual and we continue to be called on from time to time as a sounding board.

(Photo credit: mag3737)

Setting up the chess board for a pharmaceutical launch

duncan@duncanbucknell.com (Duncan Bucknell) — Wed, 06 Jun 2007 21:17:00 -0500

All of our pharmaceutical clients have impressive internal IP teams — so where do we fit in?

Here’s an example of a global clearance for a pharmaceutical client.

Product ‘X’ came up on the radar as a development candidate. So, the standard patent searches were ordered and we were asked to be part of the review process to assess the strength of competitor's IP Estates. The standard monitoring program was put in place to identify new patents coming to light before launch.

Things got busy at the client end for a while, so we were asked to take the review into the next phase. This involved the usual exhaustive analysis of the claims of the relevant patents in priority countries and documenting, working and reworking the non-infringement and invalidity cases. Not surprisingly, the invalidity work entailed further detailed rounds of prior art searching and analysis. We roped in some technical experts to test our thinking along the way.

We worked through the case and brainstormed further ideas for the country-by-country strategy and roll-out. We talked about things such as the timing of regulatory approval, litigation and launch in each country, which Counsel to use and why.

Our client used the brief we had prepared on the non-infringement and invalidity cases to instruct outside Counsel in various countries and we set deadlines for initial draft opinions. We were asked to review and comment on opinions as they came in and to focus on the overall strategy, our understanding of the prior art and the local law in each country we were dealing with. We don't know the law better than the local attorneys, but we’ve seen it applied in quite a few ways. Local Counsel were asked to identify and brief suitable local experts.

Through a series of conference calls, we reworked the opinions from each attorney until we were happy that they would provide a solid blueprint for the litigation. Local Counsel then commenced preparing evidence and court documents ready to commence legal proceedings. We kept involved as needed and reviewed pleadings and expert reports to help coordinate arguments across the jurisdictions.

A while later, we commenced proceedings in the first jurisdiction, and seemed to have caught the main competitor by surprise. It took them a while to find Counsel and experts and this gave us the opportunity to commence proceedings in two further jurisdictions to keep them off-guard. Local counsel in the first jurisdiction managed to obtain a fast timetable for the litigation which kept the pressure on the innovator’s legal team.

Our client kept us involved in the case as needed and asked us to attend conference calls with Counsel from around the world from time to time.

(Photo credit: dkinney)