Leverage your IP and mitigate your risk.
Commercialisation enables you to unlock the potential value of your intellectual property, while mitigating the risks of business.
Spoor & Fisher’s Commercial IP Department is divided into two groups: a patent and technology group (technical) and a trade marks and copyright group (non-technical).
We work with software development houses, multinational groups of companies, public-private partnerships, franchisors and franchisees, sports and entertainment celebrities, authors, artists, and more – by providing in-depth expertise in the specialist fields of technology development and financing, IP commercialisation and venture capital investment.
Our commercial IP services include:
- Brand-building: Including franchising, licensing, supply and distribution, exchange control compliance, and more
- Confidentiality, privacy and access to personal information: Ensuring compliance with complex local and foreign legislation that regulates how personal data can be collected and processed
- IP portfolio management: Including IP auditing, establishing an IP register, developing an IP strategy, landscaping the competitive environment, crafting IP policies and management guidelines, identifying gaps in IP protection, and more
- 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
- Technology transfer, technology pooling and cross-licensing: Including the structuring and implementation of technology transfer, IP pooling, licensing, and cross-licensing arrangements
- Intra-group licensing and cross-border transactions: Including centralising IP ownership, licensing operating companies, creating appropriate ownership and licensing structures, and obtaining exchange control approvals
- Public-Private technology development and commercialisation: In line with the Intellectual Property Rights from Publicly Financed Research and Development Act 51 of 2008 (IPR-PFRD Act)
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.