Some new inventions have a direct impact on everyday life, while others only affect certain industries and are never widely known to the public at large. Today, a technological revolution is taking place, and its outcome is being seen by all. This revolution is in the field of LED lighting.

The rate at which patents in LED technology are filed has increased dramatically since 1992.  (NB: the data for 2011/2012 are incomplete in Figure 1 as they are still being published)

Revolutionary products are exciting, but in order for an invention to be successful commercially, it has to take account of legal requirements, and in particular those of the world of intellectual property (IP). Manufacturers must ensure they are not infringing the IP rights of another, and also the creator would wish to ensure that his or her own invention is not copied, so that she or he is not deprived of income. IP can be a complex field, especially for an individual or small company to get to grips with, but there are some basic principles to bear in mind. Ensuring your IP is watertight at an early stage can save an enormous amount of time, trouble and money later on.

Intellectual property (IP) refers to creations for which specific legal protection may be available. Common types of protection include patents, trademarks, registered design rights and copyright. When appropriately protected, a Trade Secret is also an important form of IP.

LED Lighting and IP

Light emitting diodes (LEDs) are semiconductor light sources in which light generation is by the process of electroluminescence whereby a voltage is applied across a layer of the semiconductor material. This technology is underpinned by disciplines of chemistry, materials science, physics and engineering.

Different types of intellectual property relate to different aspects of LED lighting technology, from design rights for lamps and luminaires, to copyright for drawings and photographs and patents for the fabrication of semiconductor materials for LEDs, assemblies, mountings, control units, and heat sinks, for example, as well as trade marks for branding. For anyone developing a business built around LED lighting there are specific features of the wider landscape that can affect the success of the operation.

If they are novel and inventive, patent protection can be sought for technological developments. An invention is novel if, at the filing date of the patent application, the invention had not previously been discovered and disclosed to the public in any way whatsoever. A novel LED device that has not been publicly disclosed and is industrially applicable may therefore be suitable for patent protection. Patent protection should always be applied for before any public disclosure of the device is made. To decide if the invention is novel, the patent office compares the invention with all known public disclosures (for example, patents and patent applications, journal articles) made prior to the filing date. These disclosures are known as the prior art.

If an invention is considered to be novel, it is then examined to ensure that there is a clear enough inventive step. This means making sure that the invention is not an obvious modification of what is already known. Each invention has to be considered on its own merits.

Several rounds of review and discussion with the patent office may be required, which can result in amending and narrowing the scope of the invention to ensure it is truly novel and inventive over the prior art. However, care must be taken when amending the application because of the delicate balancing act between having a patented invention and having a commercially valuable patented invention. It is essential that there is good communication between an organisation and its patent attorney to understand this balance in terms of your business goals, the prior art, and the requirements of patentability.

Once the patent office is satisfied that all requirements have been met they will grant a patent. If not, the application may be refused.

Prior disclosure

All inventors, and anyone they work with, need to be fully aware of the implications of disclosing their inventions in advance of a patent application being made. We strongly recommend that prior to any external disclosure whatsoever, organisations take professional advice on precisely when they should patent their inventions and how they should go about it. Otherwise, there is a serious risk of giving away ideas or inventions for free.

Many organisations use components already built and tested in their products as it leads to faster and more cost-effective development cycles. Instead of buying the component outright, an inventor may decide to license the component for a specific purpose, or negotiate a contract where a royalty is paid for each shipped product into which the component is integrated. The decision regarding which route to take is down to commercial judgement as to which will be most cost-effectiveness and viable. IP skills are also required to ensure that contracts between an organisation and any third-party supplier are watertight and do not lead to any problems further down the line.

Trade marks should be used for branding commercial systems while software can be protected by copyright. In some cases the software may also be eligible for patent protection.

Registered design protection can be sought in addition to or as an alternative to patent protection. For example, a device based on long standing technology may not be eligible for patent protection. However, if the appearance of the device is changed due to a product redesign then the new appearance of the product may qualify for registered design protection – which covers the appearance of the product – and prevents direct copying of the look of the product.

An inventor should check that their intellectual assets are fully protected and their value maximised on a regular basis. It is easy to imagine a scenario where, without strategic action, through product development or modifications, or entry into new geographical markets, the IP is no longer fully protected.

Patenting issues and LED Lighting

The following questions are relevant to the discussion of IP in the field of LED lighting:

Are my activities novel or am I reinventing the wheel?

Will my activities result in infringement of third party patents?

Is this a growing or shrinking field of technical activity?

Who are the major patent holders and what are their activities?

Are there core technologies common to the product offerings of the patent holders?

How valuable is my IP?

Databases of published patent information are publicly available through national patent offices, for example through the United States Patent and Trademark Office, the UK Intellectual Property Office, European Patent Office and through the World Intellectual Property Organisation (WIPO) for international publications. Commercially-available software is available that simplifies the searching process for these databases.

Patent searches on LED lighting show over 20,000 patent families that have been filed over the past 20 years. A breakdown of the patent filing dates shows that the LED lighting area is one of expanding activity – (see image top: Figure 1: Filing rates in LED lighting).

Studies of the patent literature highlights many active players including Philips, Osram, Sharp, Valeo Vision, Cree, Koito Manufacturing Company Ltd., Toshiba, General Electric and LG Innotek.

In a crowded patent landscape there is always a possibility of a new entrant infringing third-party patents and professional advisors can help to steer a path through this maze. Some of the patents on this landscape will be of significant value, and understanding the relative position of the new development to the existing patents is important for business decisions relating to investment in an enterprise, development of a product or sale of a business.

How the land lies

Anyone with business interests in LED lighting will want to know who their nearest competitors are and what patents they hold. One way of homing in on nearest competitors is through generation of a patent landscape which can help a company in the process of evaluating their IP. In simple terms a landscape for say the set of 20,000 patent families used for Figure 1 is generated through an analysis of the most frequent words and phrases, referred to as themes, in the set of documents and allows us to see who is active in a specific area of development. Such a landscape is shown for our analysis of the LED lighting area – see image, below:

Figure 2: Patent landscape for 20,000 families on LED lighting (output from Thomson Innovation).

In general, documents that lie close together on a landscape can be considered to be related technically and the snow covered peaks are around subject areas of high patenting activity.

Analysis of the landscape for LED lighting highlights developments in organic LEDs (OLEDs), phosphors and semiconductor fabrication, heat sinks, lenses, reflectors and backlights as well as panels, mountings, control units and screens.

We have also represented the activity of major patent holders on the landscape. In some cases (for example Philips) patenting is spread across many technical areas whereas for Valeo Vision, activity is focused mainly on headlamps.

The landscape contains about 90 patent families specifically related to streetlamps. They are distributed, not unexpectedly, across the landscape reflecting that their operation requires a combination of features including LEDs, mountings, control units and reflectors.

A full understanding of where a new invention lies on the patent landscape is vital, and so too is ensuring that all contracts with third party suppliers of components are watertight. Advice should be taken at an early stage to ensure you are not developing something that could infringe someone else’s IP, and that your own IP is fully protected. We also recommend that if there is any IP challenge from another organisation, that you take advice on how to respond at an early stage. The wording of any reply can be critical to subsequent responses. Through legal and technical analysis of the situation, a good IP consultant would be able to provide an opinion on the likelihood of an alleged infringement and suggest an appropriate course of action.

With safeguards in place, individuals and companies of all sizes can ensure they are in a good position to focus on what is important to them – developing their inventions and growing their business without the distraction of IP theft or legal challenge.

For the full article on LED Lighting from Lighting Magazine

Nexeon wins award for Best Technological Breakthrough and Oxford Capital Partners wins Investor of the Year.

For those whose businesses revolve around the generation of creative and artistic works, the ease of distribution of content in the digital world is creating a divide – those who believe that copyright law in its current form no longer serves society – and those who believe that it is still fit for purpose.

In the UK,  the IPO describes the area of copyright as “complex and granular, sitting as it does within a mesh of laws and precedents. It says that “Definitions will always be tinged with uncertainty and overlap, and can end up in court for final judgements”.  In its recent publication “Rights and Wrongs.Is copyright licensing fit for purpose for the digital age?“,  UKIPO examines the feasibility of a Digital Copyright Exchange, an idea introduced in the Hargreaves Review and which follows earlier projects with the Creative Industries.  That is to make it easier for commercial entities to license copyright, and therefore make it more reasonable to expect users of that copyright to take a licence.

The IPO has identified significant problems in relation to copyright licensing in a range of market segments and industry sectors: Libraries, archives and museums, educational institutions, the audiovisual industry (feature films and television), the publishing industry (newspapers, magazines, books and journals), the music industry, the images industry (still pictures, photo libraries, artworks) – to name but a few.

They also identified an overarching cross-sector and cross-territory problem which, if resolved, they say will further improve copyright licensing for the mixed media and borderless world of the internet.

Those problems can be summarised as follows:

• Complexity of licensing processes

• Complexity of licensing organisations

• Repertoire imbalance between the digital and physical worlds

• The difficulty in finding out who owns what rights to what content in what country

• The difficulty in accurately paying to creators the fair share of revenues from uses and reuses of their copyright content

• The labour-intensiveness, expense and difficulty of licensing copyright for the high volume low value transactions that characterise the digital world

• The lack of common standards and of a common language for expressing, identifying and communicating rights information across the different creative sectors and across national borders

The IPO believes that making copyright licensing easier to use, less expensive, more accessible for licensees both large and small, for companies and for individuals, will encourage new digital services.  As a result, there will be stronger political will to enforce copyright ever more vigorously across peer to peer file-sharing, websites, search engines, payment systems and advertisers.

The debate on “Copyright in a world where everything is digital” was the focus of this month’s free INTIPSA webinar.  Joren de Wachter and Neil Wilkof gave excellent examples and illustrations for those who wish to understand the subject.  (Click here to listen to the recording of IP Strategies for copyright owners in a world where everything is digital ).  During the debate, 60% of delegates considered that copyright in its current form is no longer an adequate basis for regulating the rights associated with creative works. However, despite this drawback, a larger percentage (69%) did feel that it was possible to develop a profitable business model based on copyright content.

Joren’s contribution to INTIPSA’s activities on World IP Day, “When everything becomes software, how does that affect IP” also addresses the issue of copyright.   

Coller IP’s view is that many companies, such as those in the Creative & Software Industries who have businesses built around copyright content such as software, music, video, may find themselves securing their business with other IP rights such as Trade Marks to protect the value built up in the brand, Trade Secrets, and Contract terms rather than using technology or copyright protection per se.  Whatever happens to the legal framework, it will be important to get the IP Strategy right if commercial gains are to be achieved.

We live in a changing world………

Supply chain management can be complex and key considerations include logistics planning, organizational design and transfer pricing optimization. Inventory flow control and supply chain hub management create hurdles to overcome. Areas that can be particularly challenging are where to place and how to protect your intangible assets in a supply chain environment.

Managing intangible assets including intellectual property effectively is vital to business success and placing ownership of IP within effective business structures is important to control costs. The choice of where to locate and protect IP is specific to the company’s operations and is a significant market decision to reach in itself. However, unfortunately, the threat of IP crime is also now real and is a factor to be considered in the decision making process. Counterfeiting and piracy has increased hugely over the years, and is no longer confined to cheap, low-cost counterfeit goods but has spread to large-scale manufacturing plants that can produce, for example, cheap and realistic-looking, and sometimes therefore dangerous, copies of drugs, mechanical parts and electrical appliances.

A report in 2011 produced by consultancy Detica in partnership with the Office of Cyber Security and Information Assurance in the UK Cabinet Office estimated that the economic cost of cyber crime to UK businesses alone is £21bn per annum of which £9.2bn per annum is from IP theft. The report also said that IP theft has the greatest economic impact of any type of cyber crime considered in the study, and is likely to have the largest impact on companies that create significant quantities of IP or those whose IP is relatively easy to exploit.

A marked change in multinational business models, with local business giving way to regional and global supply chain models, and with decisions increasingly being made at international level to facilitate accepted tax structures, all has an impact on the need to carefully locate and protect IP. With increasing complexity in the supply chain, together with more and more pressure to get products delivered faster, the need for a collaborative business model becomes greater. This does however present challenges, which may not always be obvious, to intellectual property ownership, and therefore to the business concerned.

So how should businesses go about making their intangible assets work for them?

There are three key aspects to consider in many supply chain IP strategies: where the value lies (valuation); where the value remains (protection); and where the value is added (efficient routes for monetization).

Key Point 1 – Valuation

Work out where the IP/intangible asset value lies in the chain

The first step in compiling the strategy is to know where the existing valuable IP./intangible assets lie. A thorough audit of where the value is created and study of business accounts can enlighten this process. Whether the supply chain is within one company group or whether there are local suppliers involved, determining exactly who owns what within the supply chain and who has control over what needs to be protected, is important before collaboration and inventory flows are formalised.

Consider all intangible assets

A company’s real intangible asset value is derived from far more than simply patents, registered trade marks and designs. It also resides in its wider intangible assets which include so-called ‘know-how’ as well as branding, skills, policies, creative works, relationships and processes. Identification of all the valuable intangible assets in a company can be done internally or by calling in outside specialists to undertake an audit and valuation exercise. It is only by knowing where its value lies and which of the intangible assets have value, that a company can gain most by managing the value in the supply chain. It is only then that decisions can be made as to how optimise the monetization of those assets through contractual control and tax efficient management of intellectual property.

Develop a valuation matrix

A company group can benefit from developing a valuation matrix for its operations and categories of intangible assets to highlight where value lies within the group and how that value may be effectively managed and monetized.

Key Point 2 – Processes and Protection

Put your house in order

The second step is to ensure that the IP management process is as watertight as possible. An organisation needs to be able to identify correct ownership and registration of ownership of assets to retain value within the supply chain. In order to comply with certain tax laws, it will be important for a group of companies to maintain clear records and have a central inventory of assets and information. Records are also required to prove that the decision-making process around the creation and disposal of assets is being effectively managed and is taking place in the correct locations by properly appointed individuals.

In addition to having the right records and IP in place an organisation needs to ensure, for example, that its employees can’t take ideas to a competitor or another part of the external supply chain. If IP is not protected, or not protected thoroughly enough, for example in each significant country where it may be at risk, there is a real possibility that trading and product names can be stolen as well as its ideas and inventions. Sometimes this could come about because an organisation in the supply chain discloses, possibly inadvertently, a product before it has been given patent protection, which could lead to competitors gaining a valuable edge. In some countries, trade secrets are protected by an expressed or implied contract. That in effect means that because they are not specifically protected by law, they may be protected inadequately or not at all. As professional counterfeiters look to develop their businesses and intercept supply, it becomes ever more important to address the issue of the security of IP in the supply chain.

Ensure that you have the appropriate geographic protection and cultural understanding

Protecting IP in a supply chain particularly when trading across borders, can seem quite a daunting process, because each country has different procedures and there can be pitfalls in obtaining IP in each country. If an organisation has decided to trade in a particular country, it needs to ensure its intellectual assets are protected, particularly for its goods, as soon as possible in that country through an IP right An IP advisor will recommend the best route according to the nature of what is to be protected.

Attitudes to IP vary widely from country to country. Although the situation is improving, in some countries foreign companies have got into difficulties in the past when trying to prevent others using their IP, largely because reproduction of goods and designs historically has been how business is done in those countries, and employees of a company may sometimes not even be aware that such reproduction is forbidden. Cultural differences should always be anticipated.

If local suppliers are involved, the first step, before entering into or expanding a supply chain arrangement, is to determine the extent to which local law protects your IP. Any agreement needs, for example: to ensure that a supplier abides by such laws as do exist; to define the IP that needs protecting in the clearest possible terms; and to be very clear about confidentiality.

Register and assert your rights

We recommend that wherever commercially appropriate a company should register the rights to its inventions, trademarks or designs. Filing an application establishes a record of when rights came into being. In many countries rights that are not registered are very difficult, if not impossible to protect.

As with most things, preparation is vital, and when it comes to the supply chain, careful attention to the nature of contracts is very important as is having a good process in place for dispute resolution from the outset. Contracts with suppliers, for example, should ensure that subcontractors of the company they are dealing with are not allowed to use patents, designs, trademarks (or other IP that needs to be protected) without a specific licence to do so.

Where aspects of product development have been outsourced in the supply chain, it is important to understand exactly how far such a contract will provide protection. For example, will it stop the subcontractor selling a similar, although not identical, design to another company? Or a perhaps a component of the design they have produced for the contractor?

It is also important to consider aspects such as how products and packaging are designed and protected so they cannot be easily counterfeited in the supply chain.

Key Point 3 – Efficient routes for monetization

Optimising the business model

There are many aspects to take into account in choosing the best route for monetizing intangible assets and IP.

There are some basic choices to make regarding how the IP rights might be used within the supply chain in order to maximise the profits and returns from valuable assets. Manufacturing rights, distribution rights, rights of sale and resale and freedom to operate are all rights that need to be managed.

Planning early about how rights will be used is vital. One way of ensuring that the owner of the IP retains control over their rights is through licensing, in which case licensing agreements will need to be put in place, and these will need to be clear about the way rights will be used by the licensor and licensee. This applies within company groups as well as with supply chains involving local suppliers.

Those with central supply chain control will need to ensure that rights flow correctly throughout the chain, from company to company and location to location.

Knowing the competitive and legal positioning

It is important to understand the IP landscape to ensure that no parts of the supply chain are infringing third party rights in the different locations that it might operate and that it has the freedom to operate. There are many tools and techniques available to investigate the landscape and to ensure that the competitive position is understood to avoid penalties further down the road. Several IP Strategists have developed their own tools and techniques to investigate the landscape and my team at Coller IP has developed proprietary processes and techniques to expedite searches and provide visual and legal representations of competitive positioning.

Sometimes if a problem is identified, it may be necessary to acquire additional rights by purchasing IP or entering into an in-licensing arrangement and should this be required then a number of brokerages are available.

Tax/legal/transfer pricing optimization

An area to consider regarding IP in the supply chain, is that transfers of IP assets to different entities or across borders, or adding IP value can have tax implications. There can be complex monetary flows and there is a need to understand how the IP has been created and used in the business so tax implications can be managed, especially where there might be shared brand value. Consideration can be given, for example, to moving IP ownership into an entity in a chosen tax jurisdiction and creating licensing and royalty structures to manage monetary flows. Tax, IP and transfer pricing all need to be understood in these circumstances and experts are required to provide their combined expertise to the business decision-makers.

Getting the right team in place

When developing your supply chain strategy and ensuring that your intellectual assets are fully protected in the supply chain, especially when trading across borders, we recommend taking IP advice, preferably at an early stage to ensure pitfalls are avoided, opportunities are maximized and costs are kept to a minimum. It can be time-consuming and costly to sort out errors later. In addition, IP protection, including contracts, needs to be reviewed on a regular basis to ensure that, as organisations and legislation change, full protection remains in place and the intellectual assets continue to contribute optimally to the business.

A Supply Chain Manager will undoubtedly be working with the Sales Force and Manufacturing/Operational Teams within a global organisation – and possibly the Research, Design and Development Teams that are supporting client needs and satisfaction. However the integration of a Chief Intellectual Property Offer that can advise on the strategic protection and placement of IP will bring value and cost benefits – often with significant monetary gains.

By taking care to ensure that intangible assets and rights are as protected and managed as efficiently as possible throughout the supply chain, companies can trade and remain competitive in an increasingly global world.

Jackie Maguire, Coller IP

Click here for further INTIPSA TIPS and Briefing Notes and how to benefit from INTIPSA membership

Coller IP’s contribution on:

“Strategies for Valuing, Protecting and Monetizing IP in the International Supply Chain” is available for download here

All the  TIPS listed below will be available for you to access free from the INTIPSA website .  There is a wealth of information and advice here produced by INTIPSA fellows and members to guide you through the great maze of IP matters. 

 IP STRATEGY

• What is IP strategy?
• How to develop an IP strategy: outline of steps
• Typical IP strategy for a high tech / IT start-up
• How can Academia and Industry best collaborate?
• Strategies for Valuing, Protecting and Monetizing IP in the International Supply Chain
• When everything becomes software how does that affect IP strategy?

 PATENTS

• How to use a Patent Attorney Effectively and get strategically valuable patents as a result
• Rating or scoring patents – ways to do this
• Invention report template

TRADE MARKS

• Brand licensing in emerging markets: practical issues

EXPLOITATION

• If you are an SME (or any business) do you License or Sell?

MANAGEMENT

• Role of CIPO (Chief IP Officer)
• IP Insurance: what’s available and is it worth having?

ACQUISITION OF IP

• When should you patent your innovations or not: how to run a meeting where you decide what inventions to protect.
• Open v Closed Innovation: the role of IP

INTERNATIONAL CONTEXT

• Geographic filing strategies : issues to consider
• The challenges of managing IP in China
• IP: China and the Global Economy: Myths & Reality
• Locating & Managing IP assets in jurisdictions with lower corporate tax rates

Feel free to share individual TIPS, and news about the INTIPSA TIPS project with people you think would be interested.

Let’s spread the word about IP Strategy and INTIPSA!

The many potential intellectual property issues associated with the growing area of roadside-based technologies can be something of a maze.  Jackie Maguire and David Segal explain how to point your IP in the right direction.

The IP Technology developments of all kinds have a huge impact on everyday life. In healthcare, for instance, magnetic resonance imaging (MRI) and computerized tomography are accepted as routine diagnostic tools. In communications, smartphones have become an essential tool both for business and social activities, while social media networks such as Facebook and Twitter give a voice to millions of people across the world.

Imaging techniques, smartphones and social media are all inventions – and inventions, which are especially abundant in the field of ITS, are described in worldwide patent literature. ITS in particular is a fertile breeding ground for such technological creations. As motorization increases globally, so too does the need for more intelligent roadside-based solutions. Such technologies are represented by inventions such as automatic license plate recognition, embedded road sensors and loops, enforcement technologies for speeding and red light running, vehicle classification and apparatus, as well as methods and systems for tolling technologies. 

All of these inventions form part of the creator’s intellectual property and need to be part of an IP strategy, which includes a clear understanding of the value of the IP inherent in the invention, full protection from copying in all the jurisdictions in which the invention is to be marketed, as well as an understanding of how to commercialize the IP in the future.

Tolling technologies and IP

Tolling is a prime sector to analyze in more detail. Technologies in the field are associated with determination of vehicle position and distance traveled, vehicle classification, communication between vehicles and roadside sensors, as well as methods for payment. Trademarks can be used for branding commercial systems while software has copyright protection. There are, however, specific features of the wider patent landscape that can affect the success of product offerings for tolling technologies. But there are a number of questions that are pertinent to the discussion of IP in the field of tolling technologies. Is, for instance, this a growing or shrinking field of technical activity? Who are the major patent holders and what are their activities? Are there core technologies common to the product offerings of the patent holders?

One way of homing in on nearest competitors is through the generation of a patent landscape, which can help a company in the process of evaluating their IP.

How is the technical field changing over time?Are your activities novel – or are they used by your competitors? Who are your nearest competitors in terms of technology? Will your activities result in infringement of third-party patents? How valuable is your IP? Databases of published patent information are publicly available through national patent offices and through the World Intellectual Property Organisation (WIPO) for international publications.

Commercially available software is also available that simplifies the searching process for these databases. Patent searches on tolling technologies identify more than 1,500 patent families that have been filed over the past 20 years. Closer inspection of the patent filing dates shows that the area of tolling technologies is one of growing activity, with studies of the patent literature highlighting many active players, including Siemens, Mitsubishi, Robert Bosch and Kapsch TrafficCom.

Crowded house

The literature highlights core technical areas associated with tolling technologies – antennae, vehicle-to-roadside short-range communications, vehicle location technologies, and onboard units. In a crowded patent landscape, there is always the possibility of a new entrant infringing third-party patents, although professional advisors can help steer them through this maze. Some of the patents on this landscape will be of significant value, and understanding the relative position of the new development to the existing patents is important for business decisions relating to investment in an enterprise, development of a product, or sale of a business. Anyone with business interests in tolling technologies will want to know who their nearest competitors are and what patents they hold. One way of homing in on nearest competitors is through the generation of a patent landscape, which can help a company in the process of evaluating their IP. In general, documents that lie close together on such a landscape can be considered to be related technically. A patent landscape for tolling, for example, reveals patents concerning antennae, license plates, cameras, terminals, payment systems, parking spaces and readers occur across the landscape as these are important features of tolling technologies.

In many cases, patents for a particular player are dispersed across the landscape suggesting a set of technologies that any player with interests in tolling technologies requires access to. Where patents are clustered for a player in a specific region of the landscape then there is an indication that the player has focused on a specific technology or application for the technology.

Tolling technologies have been an area of growing patenting activity in the past 20 years. Assessment of the wider patent landscape illuminates the intellectual property held by both by existing players and new entrants in tolling technologies, essential information in today’s world of business.

For Full Article on Tolling Technologies click here

Intangibles assets are often underestimated in businesses, and sometimes dismissed as ‘smoke and mirrors’. Yet, identified, articulated, and protected as IP, they can be used to add real value to businesses in many ways.

At this VitalSix breakfast briefing, Jim Asher, Head of Valuation and COO at Coller IP, will lead a presentation and discussion on how you can make more of the Intangibles in your business.

Topics that will be discussed include:

• Protecting competitive edge
• Licensing into non-core markets
• Convincing investors
• Raising finance from pension funds
• Gaining tax benefits

————————————————————————————————

About the Speaker

Jim Asher is a founder, COO and Head of Valuation at Coller IP. A physicist by background with many years of experience of technology development and business management, he has specialised for over 10 years in IP commercialisation and valuation. Jim has worked with many companies in UK and overseas and, with the VitalSix team, has helped many businesses in the ThamesValley to realise and develop their Intangible Assets.

To register for this Business Briefing click here

The plan behind it is that his new regime together with the UK corporation tax rate will make the UK a more attractive place to innovate.  If the legislation goes through, the Patent Box will be used to provide for a 10% rate of tax on profit for any company generating income attributable to the rights from the ownership of a patent or an exclusive licence to a patent granted by the UKIPO, EPO or other European national office with a similarly robust examination process. Supplementary Protection Certificates (SPCs), Data Protection and Plant Variety Rights also qualify.  The new legislation is proposed to come into force in April 2013.  See Coller IP for more details.

But it is not just about the benefits for UK centric operations, there is growing demand among multinationals for comprehensive global IP management.  Many governments have adopted transfer pricing rules that apply in determining income taxes of multinationals.  OECD Transfer Pricing Guidelines state, “Transfer prices are significant for both taxpayers and tax administrations because they determine in large part the income and expenses, and therefore taxable profits, of associated enterprises in different tax jurisdictions. Some jurisdictions now offer tax incentives when IP assets are owned and managed within that jurisdiction.”

We are therefore working with other professional advisors to provide guidance on the latest transfer pricing mechanisms and the options that exist for preferentially locating IP assets.

  <<Back to main newsletter page

Licensing patent rights to companies in non-competing industries is a related and potentially lucrative move when a technology has crossover attributes relevant to different industrial needs.    There are several steps in order to make this work effectively.  These include assessment of readiness to license (development stage etc); identification of partners; initial evaluation to identify possible applications, licensees and markets leading to a clear strategy; contacting and presenting the IP to potential licensees; liaison and negotiation of terms; preparation of agreement and further negotiation.   A good IP advisor will undertake these steps on your behalf. 

Standards are integral in allowing electronics companies to develop or make products that will work with each other and to the customer’s expectations.  The strategy for many companies is to ensure their organisation’s technology is incorporated into the standard.  For each standard or proposed standard, there are numerous standards meetings – often several per year.  At these meetings, R&D employees present their recommendations as to how the standard should evolve.  If they are fortunate, they will have included some if not all of their recommendation into the standard.  These recommendations will, of course, relate to an organisation’s technology and to possible patentable inventions or patents.

Some companies have used standards to leverage their competitive advantage, for example, most large telcos, chipmakers, and consumer electronics manufacturers have developed very large patent portfolios based around the standards pertinent to their business.  These patents can be used to prevent others from even making or selling a product compliant with these standards, unless they take out a licence from the company holding the patent.

A recent update in the activities between Nokia and IPCom illustrates how important having the right patents in place can be!  Nokia have won the day.

For more information on how to influence standards click here

  <<Back to main newsletter page

One challenge for the valuation of patents is that there is often no history of successful commercialisation.  However, there are factors that can influence the value of a patent, and a good IP advisor will talk an organisation through these – they include legal, economic, protection, knowledge of the technologies involved and landscaping (competition) issues. 

Banks, however, are reluctant to lend against IP, even if there is a credible understanding of how the IP is likely to translate into future profits. Lending partly – or even wholly – using IP assets as collateral is a relatively recent phenomenon and lending secured by conventional tangible assets by banks or other financial institutions remains the main source of finance for many SMEs.  In order to use IP assets as collateral to obtain finance, organisations need to be able to prove they have a cash value which is lasting, and have a realisable market value even if the company has had to file for bankruptcy.   All this depends on a properly established valuation, and Coller IP is proud of its track record in helping many clients across a range of sectors to value their portfolios of intangible assets.

One option for raising finance, especially for firms with limited resources, is to sell IP rights to a company pension trust fund and buy them back under a long-term leasing arrangement . This also ensures that even if the business runs into hard times, the IP remains secure within the pension trust fund.  It is possibly a strategy, too, for retirement, since patents can continue to provide licensing income through a pension scheme.

The starting point to use any of these services is to know how much your assets are worth.  Valuing intangible assets is a specialist skill, and Coller IP is currently working with a number of asset management organisations to provide a complete solution to valuing and monetising an organisation’s assets, both physical and intangible.

There are many companies in the UK who focus on helping businesses with their financial planning – usually under the name of asset management or corporate finance organisations.    They help develop business finance and business strategy solutions for companies of all sizes and specialisms and can include Business Funding, Individual Wealth Management, Exit Strategies, Tax advice, Employee benefits and Individual and Corporate Protection.

Although Coller IP is not aligned to any one company, it is familiar with the work of Morgan Lloyd and its sister company Clifton Asset Management.  These are two organisations who help companies meet HMRC rules on utilising an independent IP valuation in order to arrange a lease with a pension fund.

As Morgan Lloyd says, “Morgan Lloyd is highly specialised in the area of Intellectual Property and has identified a product that works for business owners and their SIPP arrangements. Investment in Intellectual Property can create an alternative type of business funding for Partnerships, Solicitor’s Practices, Accountancy Practices, etc, whilst creating a safe haven for tax efficient growth. By transferring Intellectual Property into a SIPP, it is protected from creditors and competitors and the client’s pension fund also receives a substantial investment return for the usage of the Intellectual Property.

Clifton Asset Management (CAM) worked with Planit Products, based in Malvern, Worcestershire, which invents and manufactures a range of innovative products found in Tesco, Morrisons, Sainsbury’s and Aldi – as well as on the internet.  It helped to transform Planit’s financial fortunes a couple of years ago by showing the directors how to utilise assets already in the business. This included placing some of its Intellectual property inside a pension trust and using that same trust to secure much needed funding. Subsequently turnover has soared from £1.5 million to around £4 million in 18 months.

When considering intangible assets it is easy just to think about the value of patents, trademarks and copyrights.  However, intangible assets often include aspects such as good customer relationships and brand loyalty; and workforce skills and business processes are also significant components of intangible assets.   These aspects of valuing intangibles are often neglected.  Workforce skills are not solely the province of the HR department and can be viewed as a strategic asset.  So can relationships with clients and customers be more than the remit only of the marketing and sales department.  Company-specific know-how, tacit knowledge, and proprietary processes—some of which constitute trade secrets—are all part of an organisation’s intangible assets and can be valued as such.

 <<Back to main newsletter page

Many intangible assets can be sold or licensed to generate additional revenue. IP revenue streams can be developed either from direct exploitation of the invention or brand or by licensing a patent, trade mark, design, artistic work or know-how to a third party for exploitation in non-core markets.  Licensing is an important revenue stream and licensing revenues are rising.   In general, companies can monetise their intangible assets through a sale, licence, or some variation or combination of these – and now through auctions—particularly for patents. 

Licensing opportunities may also arise from arrangements with competitors who are infringing an IP portfolio, such as a royalty payment for the continued use of your innovation in their product. This involves a rigorous legal, technical, and economic analysis, but the rewards can be great if the licensor has a particularly strong hand with which to bargain.  A related move is the traditional cross-licensing of patent as a compromise measure. “Asset for equity” deals have also become prominent in certain industries as an additional means of leveraging the patent portfolio.

The phenomenon of securitization may be another useful way to extract value from Intangible Assets. Those wanting to realise their intellectual assets can consider granting a security interest in a financial asset – giving a royalty stream or licensing revenue, for example—in exchange for capital.   Usually this is done through traditional debt financing.  In this case, the asset is pledged as collateral while the revenue stream is used to pay off the loan.   Royalty securitizations are often associated with the copyright arena where the royalty streams are relatively stable and therefore the risk/returns are attractive to would-be investors. Trademark securitizations are another emerging area.   

  <<Back to main newsletter page

Many businesses have at least some idea of how their tangible assets can leverage debt and equity instruments and help with the task of raising finance.  Yet they may not be so aware that their intangible assets can be viewed as collateral against which to attract venture capital.  Increasingly, investors are prepared to acknowledge the vital role that IP plays in the future success of a company.  There are some investors for whom IP still not highlighted in their due diligence process, but business entrepreneurs do not always make the most of the opportunity themselves.  Companies that don’t pinpoint where the IP value lies in their business don’t fully present the commercial value in their organisation, and it is not usually accounted for on the balance sheet.   Many entrepreneurs therefore miss an opportunity by not convincingly presenting IP as an asset to investors making investment decisions.  A little work up front to pinpoint the value of the intangible assets can pay dividends.

See:  Three phase approach to protecting your capital  for more guidance.

  <<Back to main newsletter page

All intangible assets can play a major role in securing future returns on investments.  Strategic use of IP can encourage investment capital, generate new revenue streams, and optimise a company’s share price.  This leads to long term competitive advantage.  Having your IP and wider intangible assets in order and knowing how they will be used to secure an advantage is essential before issuing your information memorandum to ensure that nothing unravels during the vesting process.  For many companies this often means that they will be revisiting their IP Strategy and ensuring that appropriate internal mechanisms are put in place well in advance to address any gaps that are identified.  Unresolved IP ownership and recordal of IP ownership matters are not uncommon and become critical in ensuring that IP is seen to be well managed.  In addition, IP structuring and tax efficiencies gain greater importance. 

For more information on how we have worked with company Boards to address these issues see :- The intellectual Property Champions.

  <<Back to main newsletter page

Running a business is hard enough – to have to contend with competitors stealing your ideas is a nightmare – and for many organisations who have not taken the necessary and comprehensive steps to obtain full protection, the nightmare becomes a reality.  Having the right patents and trademarks in place is, of course, one aspect.   If only because there are organisations that acquire unprotected brand names and then try to sell them back for extortionate sums.  To be able to defend your right to revenue streams from your ideas and inventions, it may be necessary to take assertive action – and it is then preferable to own legally protectable rights to help you defend your case.  But other areas also need to be considered.  For example, does the company you are investing in have employment contracts that prevent their employees taking ideas to a competitor?   Companies need to think in advance about where they are potentially vulnerable and ensure they have adequate systems, processes and protection in place.

For more information see :- Using your assets strategically.

  
<<Back to main newsletter page

This year is shaping up to be yet another eventful year for IP in business, with many choices to consider, but which direction do you take?   There is much patent reform being considered in the US and Europe and as we mentioned in a previous newsletter,  the UK Government is consulting on a preferential tax regime for profits arising from patents, known as the Patent Box.  The consultation is closing in February and the intention is to introduce new rules in the Finance Bill in March 2012.  The Patent Box aims to encourage companies to locate the high-value jobs and activity associated with the development, manufacture and exploitation of patents in the UK.  See below to find out if your business will benefit. 

Many people still think that IP simply means having patents and trademarks in place to protect their business.  This is certainly part of it, but “its not just about IP” and there are now many ways to use Intangible Assets within a business for benefits beyond IPR protection, such as securing finance and gaining tax efficiencies.   In our main article below we outline a spectrum of these. 

Do let us have your feedback on the newsletter, and please tell us what you would like us to cover in future issues.  Please email your comments to us at Coller IP.

Jackie Maguire. CEO, Coller IP – February 2012

Below is a brief summary of how intangible assets can be used to help a business, click on items to find out more:

•  protect your business
• enhance an information memorandum
• use IP as collateral to raise venture capital
• use to generate revenue streams and cash
• raise finance, e.g. via a pension fund
• establish industry standards
• license to grow alternative revenue streams from non core markets
• gain tax benefits e.g. from the UK patent box or other tax efficient schemes

Coller IP in the Press

• Damage Limitation: Valuing the IP in Insolvency Cases
• Don’t be a Victim of IP Crime
• Looking after your assets
• Innovate, Market, Protect
• Material Assets

During the design process it became apparent that a few technology enhancements could provide a new approach and superior performance to conventional market products. Engenuity recognised the potential value of the IP associated with these enhancements and worked with its client to secure patents for each.

As a result of earlier work Engenuity was familiar with the range of our services and commissioned us to provide advice on the best route to market. It was rapidly established that technology licensing was the most appropriate business model that met with the client’s requirements. However, before seeking licensors it was necessary for Engenuity to seek independent confirmation of the potential market size and associated value for the technology to determine a suitable licence fee. Our approach was as follows:

We developed an understanding of the technology that had been developed, the relevant market drivers and companies that might be interested in the technology

We carried out market research to establish the likely market potential for the technology

We analysed the IP landscape, to identify our client’s main competitors and potential licensees, assessed how they were performing and identified the challenges faced by a new product entering the marketplace

We developed a financial model in order to establish the value of the technology and provided advice on the license fees that should be sought.

As a result Engenuity was able to enter negotiations with a number of potential licensees, based on a price structure that was representative of a competitive and commercial value for the technology.

“Obtaining an objective viewpoint from Coller IP on the potential value of licensing was very important for the project. Their thorough and independent approach produced a credible model to value the licensing proposition, without the influence or preconceptions of the stakeholders”
Graham Barnes, Director, Engenuity

To download a printable PDF of this page Click Here

For those of us that are involved day to day with IP issues it is self-evident that IP underpins every aspect of a business. It may therefore be sometimes surprising to us that many organisations are still not protecting or maximising the value of their intangible assets. An area that is particularly neglected is IP in relation to bankruptcy or insolvency, that, unfortunately is all too common in these difficult times.

Insolvency practitioners need to have a good understanding of the value of the assets remaining in a company. Administrators or liquidators will need a omplete and detailed list of all the assets in the business that they may have to dispose of it. Preserving these in advance of that is therefore vital. Having IP rights that could be sold on as part of these assets can help the company and its creditors in such a situation.

However, identifying the intangible assets may not be straightforward. For example, if a company facing insolvency co-owns IP rights with another company there can be tricky issues to resolve even with expert help. Few insolvency practitioners are experts in IP and may not understand the quality and value of the intangible assets being disposed of as part of a sale before or after insolvency, meaning that creditors may question the value realised unless the IP value issue is robustly dealt with. The buyer of a business in insolvency needs to know that they will be acquiring all the valuable IP available.

While intellectual property rights are normally viewed as assets, this might not in reality be so. There may be a requirement for ongoing registration and prosecution costs, perhaps in more than one jurisdiction, to retain the value of patents and trademarks. The organisation in administration might have contractual obligations for example to maintain a patent or trade mark according to an existing licence.

The IP issue needs to be considered at an early stage, as a great deal of the value often resides not just in the IP (patents, trademarks, designs, trade secrets and so on) but in the intellectual assets (know-how, processes), and intellectual capital (reputation, relationships and contracts). Once key employees leave, this knowledge may leave with them. If at all possible the business should be kept from insolvency if the hidden assets of the business need to be kept intact.

Dealing with this kind of scenario from an IP perspective can actually sometime s be a race against the clock, as IP rights can be lost or diluted if they are not taken care of in a timely manner – the rights could be lost forever.

Whatever the situation, there will be a need for due diligence to determine to what extent the intellectual property is actually owned or licensed by the insolvent company and whether it has value.

However, sometimes it is not possible to rescue a business and it is placed into
administration. Whilst the business is no longer able to trade viably, it may still have intangible assets with material value; in some cases, these may form the dominant component of value. This value needs to be recognised within the consideration for a trade or direct sale, in order to properly satisfy and safeguard the interests of creditors.

Such insolvency practitioners normally want to work with IP specialists who have expertise in valuing intangibles within insolvent businesses which is within the administrators’ budget and can be delivered within the tight timescales often essential to concluding a fast and satisfactory sale of the assets. The approach should be based on recognised IP valuation methods and meet the standards required for dealing with businesses in administration.

There are many examples to demonstrate that IP can realise significant value in insolvency. Whether sold with the core business and assets or sold separately, those involved in the insolvency can work successfully with IP experts to design strategies that extract maximum value from these assets.

For the full article on Valuing IP in Insolvency Cases, click here

The scale of so-called ‘IP crime’ – which includes misuse or theft of brands, technologies, designs and content– is vast. A 2009 report from The Business Action to Stop Counterfeiting & Piracy estimated that annual loss to the G20 economies from counterfeiting is around 100 billion Euros. And while most businesses know that intellectual property (IP) is important, many do not realise that having a comprehensive IP strategy can positively affect just about every aspect of a company’s day-to-day business. When it comes to tackling IP, there are three key issues to consider. Firstly, understanding what you have and the value of it. Secondly, protecting it. And finally, looking at how best to enhance and monetise it.

If IP is not protected — or not protected thoroughly enough, for example in each significant country where it may be at risk — there is a real possibility that an organisation could have not just its trading and product names stolen but also its ideas and inventions.

The first step is to undertake a thorough audit of all the intangible assets in the organisation. Most people think of IP as filing patents, and perhaps registering trade marks and designs. But a company’s real value is far more than that and is contained in its wider intangible assets. This includes so called ‘know-how’ as well as branding, skills, policies, creative works and processes. Identification of all the valuable intangible assets in a company can be done internally or by calling in outside specialists to undertake an audit and landscaping exercise.

Next, a company needs to ensure that protection is as watertight as possible. Having the right patents and trademarks in place is, of course, important. But other areas also need to be considered. For example, does any company you are thinking of investing in have employment contracts that prevent their employees taking ideas to a competitor?

Obtaining patents for innovative developments and your inventions gives you rights to stop others from making, selling, licensing, distributing or otherwise profiting from your invention for a limited period of time in exchange for a public disclosure of that invention. If an organisation is trading, or planning to trade, internationally, the issue of protecting intellectual assets across the globe can be quite intricate, particularly in this digital age. Wherever possible a company should register its IP rights in its key geographical markets. There are some simple steps that can be taken alongside professional pragmatic advice.

If an organisation has decided to trade in a particular country, it needs to try to extend protection, particularly for its goods, as soon as possible in that country. Consideration should be given to a number of routes, for example, via patents, trademarks and designs – trademarks and designs being a particularly important part of any marketing strategy. In Europe, there is the European Patenting system which can be used to provide protection across the EU States. When launching products, however, it is also important to consider distribution strategies. This is because in the EU different trade restraints apply and it is especially important to consider Competition Law which covers the free movement of goods around the EU and the avoidance of the abuse of a dominant position in the market. Recommendations for the exact route to choose will depend on the countries to be covered, the stage of development of the technology and the nature of revenue streams and cash flow.

So, finally, to commercialisation and exploitation. Coller IP has developed a commercialisation and management process that allows clients to understand the value of their intangible assets and to assess and track the commercial potential of their products and services at different stages of development. In addition, the process prompts decisions on how and whether to protect the underlying assets. A good IP advisor will not just help a business with the legal protection aspect, they will actively help in the commercialisation process of the ideas behind the goods or services that the company is selling by helping theorganisation realise the tangible value of different aspects of the IP. For anyone looking to attract funding, getting the IP in order is a must. Many venture capitalists/angel investors will be considering a range of IP factors when making their decision whether or not to invest. Knowing the value of your IP — or which parts of your IP are more valuable than others — is essential in making decisions about what parts of the business to develop, and when considering applying for funding or contemplating a sale. It is also possible to sell or license parts of your intellectual property portfolio to gain additional revenue. Putting the right IP protection in place is a vital part of the commercial strategy for a start-up or growing business and its investors.

For the full article on IP Crime, click here

According to our clients’ requirements we identify opportunities for licensing IP, for in-licensing technologies and prepare a strong platform for commercial exploitation of technologies and concepts.

Sometimes, however our clients find themselves in dispute.  The dispute might arise with an already familiar competitor, partner, client, investor or supplier; it might be raised directly by an unknown third party or sometimes there may be a case filed with a national IP office or court in the UK or abroad.

We have significant experience of avoiding disputes by careful structuring of IP applications and terms for contractor, employee and licensing agreements.  Our commercialisation and legal teams consider technical and market details, as well as legal and value issues critical to successful future trading. We much prefer to keep our clients out of court where possible and so prepare them carefully and well in advance for any contentious matters that might arise, by paying good attention to detail to the terms of IP and commercial agreements and their communication.

However, we can still help new clients who have not benefited from this proactive advice or still find themselves locked in dispute with another party.  This might be concerning ownership, commercial, patent, trademark, design right or other IP prosecution matters.  In these circumstances, our own experienced patent attorneys will advise and work in collaboration with external counsel, technical experts and our established network of lawyers to find an appropriate and cost effective solution. Where appropriate they can deal directly with matters at the UK Intellectual Property Office and European Patent Office.

In Coller IP our attorneys draw upon many years of experience of dealing with complex issues and proceedings gained from working as in-house counsel for large organisations.  They apply this expertise to allow clients of all sizes to focus on continuing operations during the potential distractions of dealing with ongoing disputes.

In preparing for negotiations, we can provide opinions and place a value on IP portfolios and provide benchmarks for appropriate and comparator royalty rates, giving clients reassurance of the effectiveness of a negotiated deal if one is available.

“Tailored strategic support to help you secure, realise and maintain full value”

To download a printable PDF of this page and make contact Click Here

According to our clients’ requirements we identify opportunities for licensing IP, for in-licensing technologies and prepare a strong platform for commercial exploitation of technologies and concepts.

Sometimes, however our clients find themselves in dispute. The dispute might arise with an already familiar competitor, partner, client, investor or supplier; it might be raised directly by an unknown third party or sometimes there may be a case filed with a national IP office or court in the UK or abroad.

We have significant experience of avoiding disputes by careful structuring of IP applications and terms for contractor, employee and licensing agreements. Our commercialisation and legal teams consider technical and market details, as well as legal and value issues critical to successful future trading. We much prefer to keep our clients out of court where possible and so prepare them carefully and well in advance for any contentious matters that might arise, by paying good attention to detail to the terms of IP and commercial agreements and their communication.

However, we can still help new clients who have not benefited from this proactive advice or still find themselves locked in dispute with another party. This might be concerning ownership, commercial, patent, trademark, design right or other IP prosecution matters. In these circumstances, our own experienced patent attorneys will advise and work in collaboration with external counsel, technical experts and our established network of lawyers to find an appropriate and cost effective solution. Where appropriate they can deal directly with matters at the UK Intellectual Property Office and European Patent Office.

In Coller IP our attorneys draw upon many years of experience of dealing with complex issues and proceedings gained from working as in-house counsel for large organisations. They apply this expertise to allow clients of all sizes to focus on continuing operations during the potential distractions of dealing with ongoing disputes.

In preparing for negotiations, we can provide opinions and place a value on IP portfolios and provide benchmarks for appropriate and comparator royalty rates, giving clients reassurance of the effectiveness of a negotiated deal if one is available.

“Tailored strategic support to help you secure, realise and maintain full value”

To download a printable PDF of this page and make contact Click Here

A due diligence exercise a couple of years ago, identified a weeding technology that justified further development and an “Invention House” of technology developers and business experts was established to create new weeding solutions which could be protected with IP and also be commercially viable. Cambrand R&D were appointed as the technology developers and the new team worked together with Coller IP to find a solution which was differentiated from the competition and the prior art. After several months of testing, development and IP landscaping, the researchers discovered a new invention and Weeding Technologies Limited was formed.

Weedingtech is now established as a UK brand that designs, develops, manufactures and sells exciting, innovative, patented weed control products. These encompass an AW series of delivery systems through to a proprietary technology called Foamstream. The AW series is a multi-functional agricultural weeding machine for use throughout the growing season. It is attached to a tractor via the front and rear three-point-linkage systems and takes all its power from the tractor’s power take off.

The AW series comprises three core components:
• A front rail carrying 6 nozzles with variable geometry
• A rear unit housing a generator, three heaters, a 600-litre tank and a lance
• A user-friendly touch-screen control console located inside the tractor cab, giving the user full control over the front and rear units.

The combination of the front working rail and the rear working lance mean the AW series is capable of pre-emergent, inter-row, inter-plant and spot weed control. That’s why it is such a flexible and versatile weeding solution. Foamstream is underpinned by an IP portfolio of patents and trade marks. It reduces weeding costs, is made using natural products such as oil seed rape, potatoes, wheat and maize and is non-weather dependent.

Foamstream was launced at The Lincolnshire Agricultural Machinery Manufacturer’s Association (LAMMA) in 2012 which showcases the latest news and innovations in farming machinery. Time and again farmers explained how difficult weeding is for them: increasing legislation around the use of herbicides, and the expense of manual weeding mean they need to find a viable alternative.

Foamstream is now set to provide that alternative and in recognition of Weedingtech’s achievements it has been awarded the prestigious Loven Cup, the oldest award that LAMMA give out. The Loven Cup is for the ‘Best New Product or innovation at LAMMA 2012.’

“All innovative new companies need a strategic IP firm to support them along the process and ensure they have a robust IP strategy. Coller IP were Weedingtech’s selected partner and have been instrumental in developing our strategy, and navigating our start-up through a number of patent and Trade Mark registrations. These subject areas at first appear daunting however Coller’s straight forward, practical and customer friendly approach made the process simple and effective. We are pleased to work with Coller IP, we recommend them strongly and feel they were invaluable in helping us protect the IP we developed. This led to us winning the prestigious Loven Cup for “The Best New Product at LAMMA 2012”.

Leo de Montaignac, Operations Director, Weeding Tech

Leo de Montaignac, Alexander Goldsmith and Richard Hobbs with the Loven Cup and award certificate

January 2012

Jackie Maguire is a founder and the chief executive of Coller IP, which provides a full range of professional IP services from patent and trademark filing to brokering, licensing, valuation, due diligence and legal opinion. She gives her expert advice on intellectual property.

Intellectual property can seem a rather vague and nebulous term, perhaps applicable only to those who make their living from producing inventions. Or it is thought of as being about ensuring trademarks are in place so that legal disputes on ownership do not arise. In fact, it covers a great deal more than that. Intellectual property is a piece in a jigsaw known as the intangible assets of an organisation, which in turn encompasses the whole way in which a company does business.

Organisations need to take IP seriously as it is vital to their success. There are three parts to consider. They need to fully understand the value or extent of their IP; fully protect it; and also commercialise it.

Contrary to the expectation of many, it is possible to put quite a specific monetary value on these intangible assets, which is really important when seeking funding, looking to sell a company or in a bankruptcy situation.

If IP is not protected or not protected thoroughly enough, for example in each significant country where it may be at risk there is a real possibility that an organisation could have its trading and product names stolen as well as its ideas and inventions.

So how should businesses go about making their intangible assets work for them? The first step is to undertake a thorough audit. A company’s real value is far more than simply filing patents, and perhaps registering trade marks and designs. It also in its wider intangible assets which include so-called know-how as well as branding, skills, policies, creative works and processes.

Identification of all the valuable intangible assets in a company can be done internally or by calling in outside specialists to undertake an audit and landscaping exercise. Next, a company needs to ensure that protection is as watertight as possible. In addition to having the right patents and trademarks in place an organisation needs to ensure, for example, that its employees cant take ideas to a competitor.

So, finally, to commercialisation and exploitation. Coller IP has developed a Commercialisation and Management Process that allows clients to understand the value of their intangible assets and to assess and track the commercial potential of their products and services at different stages of development. In addition, the process prompts decisions on how and whether to protect the underlying assets. A good IP advisor will not just help a business with the legal protection, it will actively help in the commercialisation process of the ideas behind the goods or services that the company is selling by helping the organisation to realise the value of all the different aspects of the IP.

For anyone looking to attract funding, getting the IP in order is essential. Many venture capitalists/angel investors will be considering a range of IP factors when making their decision whether or not to invest. Knowing the value of your IP or which parts of your IP are more valuable than others is essential when making decisions about what parts of the business to develop, and when considering applying for funding or contemplating a sale. Putting the right IP protection in place is a vital part of the commercial strategy whether for a start-up or growing or established business and its investors.

For the full article on Looking after your Assets, click here

Stephen Huggett from the Alchemist explains how Jackie Maguire and Jim Asher started Coller IP:

Five years ago, Jackie Maguire and Jim Asher started Coller IP, a firm specialising in Intellectual Property. IP, then, was not a hot business item. But, they had unknowingly tapped into a growing market – even fuelled by the recession.

“Our business is all about innovation, and protecting it.” says Jackie and nothing brings out innovation more than tough times. “We deal with all the intangible assets of a business, see where the value is and explain it to businesses. So, (we look at) people based assets, intellectual property, also wider intellectual capital such as branding, positioning, reputation, and more- all of which are
necessary and important to businesses. Our view is that for a sustainable business, there is a need to have an element of each of these 3 in place: intellectual assets, intellectual property and intellectual capital.” “We help our clients learn to deal with all the intangible asset issues that will arise over the
life of their business. We analyse where the value is in the business, and then help clients come up with a plan to commercialise, protect, strategise or monetise that value.” says Jackie.

Coller IP was not affected in a negative way by the recession. Instead they found that tough times are a fertile time for innovation. “During the recession everyone was very innovative. We had a number of clients who had been made redundant and used their redundancy money to have a go at starting their own business, or inventing a product. So, in effect, innovation was stimulated by the recession.” says Jackie.

Coller IP has been able to carve a lucrative niche market, that does not conflict with other professional services firms such as accountants and lawyers. It is not purely a law firm but they do have patent and trademark attorneys.

Jackie remarks “Even though you would think we would have competition from
accountants and lawyers, we don’t. In fact, our services are often complementary. Very rarely there is an overlap. We often receive referrals from commercial lawyers”.

Professional services firms usually grow their client base through networking, word of mouth and referrals. Jackie does all that and has also embraced the social media phenomenon to spread the word and stimulate conversation around IP. They blog, Twitter, and have a presence on social and professional platforms such as Facebook and LinkedIn. They have been able to use them effectively to drive traffic back to their website.

In the future, Coller IP could expand and grow into different divisions, each specialising in different areas of IP but Jackie feels this would derail the referral system they currently enjoy from law firms and accountants that see Coller IP as providing a full suite of niche IP services.

“At the moment, I think we have a one-stop shop and that works for us, but we will keep our eyes on developments,” says Jackie. “Also the further we spread ourselves the more we lose the human interaction with our clients, which is the exact thing that is giving us the quality of our business. We are very comfortable to develop by growing our existing services to meet market needs.”

For the full article on Innovate, Market, Protect click here

Opportunities exist for Intellectual Property professionals to join a growing IP business.

You will work closely with a range of clients to provide guidance and advice on the value of all aspects of intangible assets. You will also have excellent consultancy skills and an aptitude for the commercialisation of ideas, inventions and brands. You will be working with clients in a range of technical, commercial and senior management roles and across many industries. An ability to think strategically and laterally is essential.

Candidates will be degree level and numerate and are likely to have further professional qualifications. A technical background and experience is not essential but would be an advantage as successful candidates will be required to evaluate the commercial value of technical developments and investments . Successful candidates will be appointed on a permanent basis with full remuneration package.

To apply, please send your CV and any accompanying information to

Dr Jackie Maguire, CEO,
Coller IP Management Ltd,
Fugro House, Hithercroft Road,
Wallingford, Oxforshire,
OX10 9RB,

Call 0870 402 1616

Coller IP wishes to appoint qualified attorneys to work closely with a range of clients to provide guidance and advice on all aspects of intellectual property rights. Likely candidates will be qualified European/Chartered Patent Attorneys who have been working closely on commercial IP developments.

A qualification in chemistry, materials, physics or electronics is essential together with relevant experience in the field, as successful candidates will be required to evaluate the commercial viability and patentability or protection of prospective developments and investments. You will have excellent consultancy skills as you will be working directly with clients in a range of technical, commercial and senior management roles. You will also be carrying out activities to secure new clients with a particular focus on physical science applications.

You will have experience in the assessment of patent portfolios, patent prosecution and also in providing validity/freedom to practice opinions and claims charting. The case work and projects will be varied and will appeal to individuals that like to cover the full spectrum of IP activities.

Successful candidates will be appointed on a permanent basis with full remuneration package.

To apply, please send your CV and any accompanying information preferably by e-mail to recruitment@collerip.com.

For more information please visit our web site at www.collerip.com.

Contact: Dr Jackie Maguire, CEO, Coller IP Management Ltd, Fugro House, Hithercroft Road, Wallingford, Oxfordshire, OX10 9RB.

We were proud to welcome Mr. Seong T Ahn and Ms. Sun-Hee Kim from Central International Law Firm, Korea to our offices in November in recognition of our long standing co-operation.

Left to Right: Dr Jackie Maguire, Mr Seong T Ahn, Ms Sun-Hee Kim, Dr Anna Denholm

Our network covers activities in:

Algeria, Angola, Argentina, African States, Armenia, Australia, Austria, Azerbaijan
Belgium, Brazil, Canada, Chile, China, Coatia, Colombia, Cuba, Cyprus, Czech Republic, Denmark, Egypt, Estonia, Eurasia, Finland, France, Georgia, Germany
Ghana, Greece, Gulf States, Hong Kong, Hungary, India, Indonesia, Iran, Iraq, Ireland, Israel, Italy, Jamaica, Japan, Kazakhstan, Latvia, Libya, Lithuania, Luxembourg, Malaysia, Mexico, Monaco, Montenegro, Netherlands, New Zealand, Nigeria, Norway, Oman, Philippines, Poland, Portugal, Qatar, Republic of Korea, Romania, Russian Federation States, Saudi Arabia, Singapore, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Sweden, Switzerland, Taiwan, Thailand,
Trinidad and Tobago, Turkey, Ukraine, United Arab Emirates, United Kingdom, USA, Venezuela, Vietnam

According to our clients’ requirements we identify opportunities for licensing IP, for in-licensing technologies and prepare a strong platform for commercial exploitation of technologies and concepts.

Sometimes, however our clients find themselves in dispute. The dispute might arise with an already familiar competitor, partner, client, investor or supplier; it might be raised directly by an unknown third party or sometimes there may be a case filed with a national IP office or court in the UK or abroad.

We have significant experience of avoiding disputes by careful structuring of IP applications and terms for contractor, employee and licensing agreements. Our commercialisation and legal teams consider technical and market details, as well as legal and value issues critical to successful future trading. We much prefer to keep our clients out of court where possible and so prepare them carefully and well in advance for any contentious matters that might arise, by paying good attention to detail to the terms of IP and commercial agreements and their communication.

However, we can still help new clients who have not benefited from this proactive advice or still find themselves locked in dispute with another party. This might be concerning ownership, commercial, patent, trademark, design right or other IP prosecution matters. In these circumstances, our own experienced patent attorneys will advise and work in collaboration with external counsel, technical experts and our established network of lawyers to find an appropriate and cost effective solution. Where appropriate they can deal directly with matters at the UK Intellectual Property Office and European Patent Office.

In Coller IP our attorneys draw upon many years of experience of dealing with complex issues and proceedings gained from working as in-house counsel for large organisations. They apply this expertise to allow clients of all sizes to focus on continuing operations during the potential distractions of dealing with ongoing disputes.

In preparing for negotiations, we can provide opinions and place a value on IP portfolios and provide benchmarks for appropriate and comparator royalty rates, giving clients reassurance of the effectiveness of a negotiated deal if one is available.

“Tailored strategic support to help you secure, realise and maintain full value”

To download a printable PDF of this page and make contact Click Here