Overview
Understanding how different types of intellectual property are created, defined, function and can be protected is important knowledge in recognising a company’s competitive advantage. Assets are so much more than patents, trademarks, copyrights, and trade secrets. Rouse Consultancy undertook a job that initially did not concern IP in the traditional sense but one of business development and growth. An opportunity and a new revenue stream had been identified and the company needed to investigate and evaluate its potential. As a pioneer and industry leader in individualised technology for the treatment of painful joint injuries the full focus was naturally on its technologies, but the opportunity of licensing the company’s order management platform to an external medical technology company was now a reality. Rouse was involved in evaluating the opportunity in line with the company’s business strategy which resulted in a licensing model for the new venture. A model for the order management platform needed to be formed based on a general license structure to establish a level of secrecy to be achieved in relation to the external MedTech company.
The client had recognised an opportunity and a possible new revenue stream based on their unique order management platform. The client’s initial idea was to license the software of the order management platform straight to the end-user. However, the client lacked a full understanding of how to optimise the licensing model for both them and future licensees. One challenge being determining what should be included in the license as well as establishing how much control of the software they should continue to own.
Our approach
The starting point for Rouse’s analysis was to understand the scope of the order management platform’s software primarily as a transaction object between the client and the MedTech company. All software codes linked to the platform, different functions, modules and patents constituted the foundation on which Rouse could provide recommendations on what was to be regulated in the license agreements. Basically, identifying the core components and activities within the platform that created value for users and licensees. With asset identification and workshops, Rouse could break down the software into components to put together a clear secrecy license structure between the client and the future licensee in the MedTech industry.
Value added
Rouse helped the client in defining the opportunity and finding a simple, pragmatic solution to it. The client was provided with a license model for the order management platform and received support that facilitated the deal between the two parties with their first licensee and later first client, by eliminating the risks of ambiguity within the agreement aspects about licensing. The recommendations regarding the design of license agreements provided the client with a more solid basis on which functions the licensee may or may not openly communicate, describe internally or externally or to third parties. As a result of the client’s new understanding of licensing models, a new project was defined resulting in a patent application being submitted based on the license structure segmentation. This strengthened the client’s position and the licensee’s dependency on the client’s technology. As well as adding assets to the balance sheet increasing the value of the company long term.
