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IP Commercialization

IP is an intangible asset that can be utilized in many ways to generate maximum profits. The success in business can be ensured by efficiently managing its IP portfolio and using adequate means to capitalize on these assets, to further its financial plan.

Agnihotri & Jha Associates® is a known name in this area. We have a proven track record and experience in assisting clients in monetization of Patents, Trademarks, Copyrights, Designs, Trade Secrets, Geographical Indications, etc. We have routinely assisted clients in their commercialization efforts. We are effective in finding relevant commercialization partners and engage with them on prospects of commercializing IP through various models such as by IP licensing, sale of IP, spinning off a company etc.
Licensing:
Licensing / technology transfer is a way of making one’s product commercially accessible. It gives some exploitation rights to an entity, which in turn pays royalties to the licensor.

Our team understands the industries in which the clients function and help them strategize in a way to attain their much-desired business goals.

Depending upon the nature of the agreement between the parties, licensing can be –

  • Exclusive License: An exclusive license is the one in which a licensee prohibits the licensor from licensing the patent to any other party.
  • Non-Exclusive License: In such cases, the licensor undertakes a lot of risk by limiting its income source from a sole licensee and hence prefers to enter into non-exclusive licenses, where there can be multiple licensees. A non-exclusive license can further be sub-licensed by the licensee, thereby making the offer more lucrative.

A license agreement basically undergoes two major steps for its completion
Documentation: Under Section 68 of The Patents Act, 1970, a license in a patent shall be valid when it is in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and such agreement is duly executed.

Registration: After the agreement takes place, the party that had acquired the license has to register the title or interest in the concerned patent within six months from the date of agreement. This registration process has to take place by the licensee by submitting application Form 16, under section 69(1), 69(2) read with rule 90(1) and 90(2) in writing and has to be signed by both the parties.

Agreements:
Our team at Agnihotri & Jha Associates® are well aware of issues that crop up during commercial relationships, and therefore put in all of our experience by investing a lot of time and resources during the drafting stage to ensure that our client’s business interested typically of all the contracting parties are protected from all the angles i.e. stages of contract execution – pre-drafting, signing and till the contract is fully executed.

We ensure that clause’s incorporated in the Contracts/Agreement drafted is sufficiently rigid to guard against subsequent misinterpretation and still have flexibility to allow other party/parties to incorporate their requirements.

We ensure that Contracts/ Agreement drafted contain suitably worded clauses about Jurisdiction & Applicable Law, Commercial Terms, Termination Clauses, IP Ownership, Confidentiality, Technology Transfer, Turnkey Transactions, Distributorship, Force Majeure, Trademark protection, etc. and therefore are complete in all respects.

Brief list of the types of agreements we handle

Business / Technology transfer, Assignment, Licensing, Franchising, Software development, Joint Venture, Confidentiality & non-disclosure, Employment, Vendors & Distributors, IP components of Mergers & Acquisitions

Patents related agreements
Assignment / Exclusive License Agreement, Non-Exclusive License Agreement, Confidentiality Agreements, Innovation Development Agreements

Designs related agreements
​Assignment / Exclusive License Agreement, Non-Exclusive License Agreement, Confidentiality Agreements

Copyrights related agreements, Assignment Agreement for Literary Works, Sound Recordings, Mobile/Digital Rights, Publication Rights, Film Rights, Broadcasting Rights, Computer programs and the like.

License Agreements for Publication of Literary Works, Sound Recordings, Mobile / Digital Rights, Digital and Mobile Sound and Visual Clippings, Publication Rights, Film Rights, Broadcasting, Computer Programs, Assignments and Licenses for the Entertainment industry.

Trade Mark related agreements
Assignment / Franchise Agreement, Registered User Agreements, Distribution Agreements

Other Agreements – Collaboration Agreements, Endorsement Agreements.

Co – Branding
Co-branding is an amalgamation of two or more branded products to form either a separate and unique product or brand; the use of distinct brands in combination with market-related products for complementary use.

Strategy
Co-branding is a popular technique used by businesses to attempt to transfer the positive associations of another company’s product or brand to a newly formed co-brand or composite brand, or to create synergy with existing brands. The co-branding strategy is beneficial for both co-branding partners even if the respective brands do not have equal standing or brand equity in the marketplace. A well-executed co-branding strategy is effective in exploiting good product performance, or in breaking into lucrative new markets previously unavailable or untapped by either or both of the co-branding partners.

Co – Branding Agreements:
The rights, restrictions and obligations / duties of a co-branding strategy are implemented through a co-branding agreement that is binding on both parties. A co-branding agreement contains vital provisions and must be carefully drafted to protect the parties, as well as clearly provide the parameters of the relationship. A typical co-branding agreement includes provisions covering branding specifications, market plan strategy, licensing specifics, payments and royalties, representations and warranties, term and termination, confidentiality, indemnification and disclaimers.

Due Diligence
IP Due Diligence & Valuation

The value of Intellectual Property is vital for many businesses. The commercial strength and value of technology, brands and innovation is not properly articulated in memorandums or misjudged by buyers.

Due diligence is extremely vital in IP transactions as any other business acquisition. Patents and trade-marks are increasingly sold and licensed as standalone assets. Besides being gaining access to the appropriate market participants, these transactions also benefit from a quantitative assessment of the functional, legal and economic characteristics of the IP assets.

We assist organizations by conducting a thorough due diligence in relation to IP assets and then assessing the commercial value of IP whether it be for the purposes of financial reporting, tax, litigation and strategy determination.

Deal assessments
We perform IP due diligence assessments of deals. We counsel clients on choosing the deal structure that will maximize the value and enforceability of their IP assets.

Our IP diligence includes assessing patent, trade secret portfolios, trademarks reviewing license agreements, confirming IP ownership, assessing the adequacy of IP disclosures under securities laws, evaluating the strength and value of lead programs and developed and clinical stage products, assessing trade secret protection programs and the management of data privacy issues and appraising R&D programs.

Portfolio reviews
In conducting portfolio reviews for companies considering acquiring or investing in intellectual property, we identify potential problems concerning the targeted IP, using knowledge we then leverage to negotiate more favorable deals and to recommend value-enhancing solutions. We assist also in identifying, assessing and pursuing funding options.

Mergers and acquisitions
We provide overall IP support for mergers and acquisitions and other corporate transactions, including deal structuring, IP due diligence, and negotiation of relevant IP terms and agreements.

IP Due Diligence
IP rights are a central active for innovative companies and may be a decisive parameter in relation to business partners as well as to competitors.

Joint Ventures
The term “Joint Venture” doesn’t have any complex legal or technical meaning; it is simply an arrangement between two or more organizations in furtherance of a common objective.

Joint Ventures are one of the most collaborative models, listed here are four lifecycle stages

  • Pre-Contract, before the signature of the Joint Venture Agreement,
  • Contract, signing a Joint Venture Agreement,
  • Implementation, fulfilment of the JV contractual obligations,
  • Termination, end of the JV contractual obligations

Important points to be noted

  • It must be in writing,
  • It must be signed by both the parties,
  • It must specify the rights licensed,
  • It must specify the royalty payable if any,
  • The term of the license and the territory for the rights

Franchising
In a franchise agreement, one party (the franchisor) grants one or more other parties (the franchisee) the right to use its trade mark or trade name as well as the use of its business systems and processes (which may also involve IP). These licensed rights are used by the franchisees to provide goods or services to agreed specifications controlled by the franchisor. In return, the franchisees pay royalties and often pay fees and contribute to marketing costs.

The franchisor gains rapid expansion of business with minimal capital expenditure. Based on the franchisor’s initial success, the franchisees gain immediate brand recognition and established business processes and products.

Franchise agreements tend to be more complex than licensing agreements, partly because the franchisor must ensure that franchisees consistently provide high quality products and services so that the brand’s reputation is not tarnished.

Mergers and Acquisitions (M&As)
‘M&As’ are a pair of legal transactions at corporate level that are similar to each other in the way they produce a desirable business entity to serve as a commercialization vehicle.

A merger is the legal consolidation of two business entities into one. An acquisition occurs when one entity takes ownership of another. Both transactions result in the consolidation of assets and liabilities into a single entity, and the distinction between a merger and an acquisition can be vague in commercial terms. An acquisition (rather than a merger) is considered to occur when your company is significantly smaller than the other, or when the transaction is forced upon your company.

For example, if you’re an inventor you may hold IP as an asset in a small, non-operational company that you own and run for prototyping and demonstration purposes only. You then seek acquisition or merger of your company by or with a larger organization with the funds to commercialize the IP.

If you have a technology, invention or innovation and wish to bring it to market, talk to us to find out how we can open up a pathway for you to bring your innovation to full commercial potential.