Commercial IP
Leverage your IP and mitigate your risk.
Intellectual property is one of the most valuable assets in any business. Spoor & Fisher’s Commercial IP department combines IP expertise with specialist commercial experience to help clients unlock and maximise the value of their IP — from early-stage innovation through to large-scale commercialisation.
Our clients range from start-up businesses, universities, and research organisations to large corporates, both in South Africa and internationally. Whatever the scale or complexity, we deliver commercially-focused IP solutions tailored to each client’s strategic objectives.
IP aspects of M&A transactions
Intellectual property considerations are central to the success of any merger, acquisition, or corporate transaction and in many transactions, IP is the most valuable asset. Our team works closely with transacting parties and their advisors to identify, assess, and mitigate IP-related risks before and during a transaction and post closing — ensuring that IP assets are properly valued, ownership and rights are clearly established, and regulatory requirements are met. Our M&A-related IP services include:
- IP portfolio audits – establishing an IP register, developing an IP strategy, landscaping the competitive environment, identification and assessment of scope, validity, and territorial coverage
- Chain of title/rights verification and competent transmission
- Confidentiality and trade secret protections – evaluating the adequacy of NDA regimes and employee IP confidentiality, IP assignment and restraint provisions
- IP (registered and unregistered), IT and Data Protection due diligence
- • Mergers and acquisitions – Extending to verifying IP ownership, verifying the status of registered IP items, assessing the scope of claims, and assessing the value of IP in the context of a business
- Regulatory considerations – identifying exchange control and other regulatory compliance requirements and initiating and conducting exchange control applications
- IP aspects of transaction agreements including IP identification, cps, transfer and closing provisions and warranty negotiation
Licensing & IP Commercialisation
Our experienced licensing practitioners are active members of the Licensing Executives Society of South Africa and advise across the full spectrum of IP commercialisation — from endorsement deals to franchising, technical licensing of patents, database rights, know-how, and copyright, across all types of protected works including software, film, music and literary works and across traditional and convergent new media platforms.
Our services also include identifying exchange control requirements and initiating and conducting exchange control applications.
IP Policy, Management & the Public Sector
We have extensive experience in drafting and implementing IP policies and management processes for universities, state-owned entities, and major corporates across sectors including telecommunications, mining, rail, power generation and food service. The team also advises on public-private sector engagements, with particular expertise in legislation affecting intellectual property resulting from publicly-funded R&D and its impact on IP ownership and commercialisation.
IP & the Not For Profit Sector
Our experienced practitioners advise well-known not-for-profit clients, including those with an arts/ culture focus or iconic founder, on:
- entity formation and governance (including trusts and NPCs)
- a variety of bespoke transactions, from publishing, film, theatre and exhibition/ art-work licensing and distribution arrangements to facilities development.
AI Audits
Creative and innovative professionals increasingly use generative AI tools in developing their creations and innovations. The terms imposed by AI service providers potentially create risk where commitments made by these professionals to their clients may not be underwritten by AI service providers. Our experienced practitioners identify these gaps and provide recommendations on how to address them.
Promotional and Innovative Competitions
We have extensive experience in innovative and promotional competition regulatory compliance and drafting compliant competition terms.
IP Advisory
We undertake opinion work on all aspects of IP, particularly in relation to its impact on exploitation including issues relating to classification (movable/ immovable), duration and title.
Specialised Services
Our commercial IP services include:
- Brand-building — Including franchising, licensing, supply and distribution, exchange control compliance, and more
- Assignment and sale of IP rights
- Technology transfer and cross-licensing — Including the structuring and implementation of tech transfer, IP pooling, licensing, and cross-licensing arrangements
- IP assessments and valuations
- IP aspects of mergers and acquisitions
- Due diligence investigations
- Licensing and franchising
- Supply and distribution arrangements
- SME and start-up support
- Collaborations and joint ventures
- Joint development arrangements
- Structuring of corporate IP ownership and intra-group licensing
- Confidentiality agreements and regimes
- Material transfer agreements
- IT services contracts, software and (SaaS) development, licensing and subscription agreements
- IP policy, management and compliance
- AI policy and audits
- Exchange control and other regulatory compliance
- Data, database rights and protection of personal information;
- R&D tax credits
- IP advisory and opinion works.
FAQ's
What is the difference between distribution, franchise and licensing arrangements?
A license agreement is an agreement in which a licensor authorises acts that would otherwise constitute an infringement of its intellectual property.
In a distribution arrangement, a distributor buys goods from the IP owner and on-sells them for profit. The distributor may need to use certain trade marks to advertise the goods for sale, but does not purport to be the originator of the goods or the owner of the trade marks.
Franchising, on the other hand, is aimed at enabling a licensee to replicate an entire business model. At its core, franchising is a license arrangement that grants a third party the right to use certain IP, but the nature of the IP distinguishes it from other license agreements.
What key aspects should I consider when granting IP licenses to others?
You should consider:
- identifying the licensable interest (i.e. the IP that would be infringed by the licensee in the absence of the license);
- the term and territory of the license (having regard to the IP that forms the subject of the license);
- the acts that the licensee is authorised to perform in relation to the IP (e.g. is the licensee authorised to make, use or sell the patented product? Is the licensee authorised to use a trade mark as a corporate identity?)
- The consideration payable in exchange for the grant of the license
- The right of the licensee to grant sub-licenses or assign the license
What due diligence should I do when considering obtaining a license for IP owned by someone else?
In this case, you should consider:
- The relevance of the IP to the product/service you want to commercialise
- The validity of the IP (especially where an application for a registered IP right has not undergone substantive examination during prosecution)
- The scope of the IP and its ability to limit competition
What is tech pooling or cross-licensing?
Technical development is often undertaken collaboratively, so that different contributors own different parts of the IP associated with a product.
It may make sense for all contributors to pool their respective technologies so that each person can make and sell the best version of the product, rather than each contributor selling an inferior product.
Similarly, where two or more parties have IP relating to a product, they may cross-license each other to enforce a monopoly against other competitors.
What should I consider when engaging a service provider to provide services?
When engaging a service provider who may create IP, such as copyright works, inventions or designs, while providing the services, it’s important to consider whether you expect exclusive use of these.
For example, if you paid for the development of a computer program, or the drawing of an artistic work, do you expect that only you will have the right to use or reproduce that work?
You should also consider whether the service provider should be the only person who is entitled to supply the developed goods/services to you.
For example, if you pay for the development of a piece of equipment by a supplier, is the intention that this supplier will be the only person who is authorised to supply the equipment to you?
The provisions relating to the ownership and use of resulting IP must clearly reflect both parties’ agreement when it comes to exclusive benefit to the client and exclusive supply by the service provider.
Meet the team
Dina Biagio
Partner, Spoor & Fisher South Africa
John Foster
Head of Trade Marks, Spoor & Fisher South Africa
Duncan Maguire
Director, Spoor & Fisher Jersey
Prof. John Mcknight
Partner, Spoor & Fisher South Africa
Danie Pienaar
Partner, Spoor & Fisher South Africa
Tshepo Shabangu
Partner, Spoor & Fisher South Africa
Jeremy Speres
Partner, Spoor & Fisher South Africa
Vanessa van Coppenhagen
Partner, Spoor & Fisher South Africa
Marco van der Merwe
Partner, Spoor & Fisher South Africa
Herman van Schalkwyk
Partner, Spoor & Fisher South Africa
Eben van Wyk
Partner, Spoor & Fisher South Africa
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