Spinning out your business and going it alone is a really exciting time for any business, and we’re often asked: once I’ve spun out, how do I monetise my intellectual property?
Before you can consider monetising your IP, have a think about the following two questions: first, what is your IP? And second, do you actually own it?
We’ve addressed each of those questions below, before going on to explain how you can make money from your IP.
What is your IP?
As a first step, you will need to identify the IP that your business uses. Is it registered or unregistered IP? Who created it? Examples of registered IP are trademarks, registered designs, patents and domain names. Unregistered IP could be copyright, unregistered designs, knowhow (for example processes, procedures, recipes) or trade secrets. You need to figure out what IP your business uses and whether it has been registered or not. If not, has it been documented so that it is clear what it is?
Do you own your IP?
Once you have an idea of what IP your spin-out uses, you need to check that your new company actually owns that IP. It sounds basic, but we regularly see companies using IP that they think they own but that, on investigation, is in fact owned by the parent company, by the university, or jointly-owned with codevelopers or other third parties. Just because you created IP, doesn’t mean that you own it. If you aren’t sure, it’s best to formally assign the IP to your new company in writing, so that there can be no confusion later down the line. Remember that any assignments of registered IP will need to be recorded at the relevant intellectual property office.
A word on jointly-owned IP: if you jointly own IP with a third party, each party can use that IP, however you will each need the other’s permission in order to assign the IP or to license it to a third party. This is incredibly restrictive and we advise against owning IP jointly if at all possible. It is much better for one party to own it outright and to allow the other party to use it on certain terms.
How do you monetise your IP?
Once you know what IP your company uses, and you are comfortable that your company owns that IP, you can think about making money from it. The most common way to monetise IP is to license it to third parties. You can grant an exclusive licence (where only the licensee can use the IP), a non-exclusive licence (where you can license the IP to multiple parties) or a sole licence (where both you and the licensee can use the IP). Licences are incredibly flexible and can reflect whatever terms you agree with the licensee. In addition to exclusivity, you will want to think about territory, term and, crucially, scope. By scope we mean: what is the licensee permitted to do? Can they use your IP for any purpose or for any types of goods or services? Or are they limited, for example, to using your patent for a drug for certain indications, or your trade mark on certain types of products? Think carefully as you can grant an exclusive licence to one party for a certain limited scope and also grant another exclusive licence of the same IP to another party for a different limited scope.
When considering licences you will also want to think about what warranties you are giving (if any) regarding the IP, what responsibility each party takes for any liability (including product liability) as well as who will be responsible for maintaining and enforcing the IP. For instance, if a third party thinks that your licensee’s use of your IP infringes their rights, is it for the licensee to defend that claim, or is it up to you?
It sounds basic, but we regularly see companies using IP that they think they own but that, on investigation, is in fact owned by the parent company, by the university…
Another key area for spin-outs to consider when licensing IP is improvements. You are likely to be constantly improving your offering, meaning your IP will evolve. Is any IP in those improvements automatically included in your licence, or will that be licensed separately?
Finally, you will of course want to think about royalties. Not all licences are royalty bearing, but to monetise your IP you will likely want a cut of whatever profit your licensee makes. Is the royalty a fixed fee or should it be a percentage of profits? Is it fixed for the term of the licence or is it negotiable? Is your royalty variable based on your licensee hitting certain milestones (for example sales milestones, or further development milestones)? These are all considerations to be negotiated and written into your licence.
However you decide to make money from your IP, you will want to make sure that you are clear on the terms on which you are allowing anyone else to use it. At least as important as the above, is making sure that you can stop sharing when you want/need to. Termination provisions are key so that you retain control of your IP.
It is also possible to release capital from your IP by entering into a security agreement or putting it in escrow. These options limit the control that you have over your IP so please consider any terms very carefully before doing so.
If you are considering monetising your IP and would like to discuss your options or you have questions about your spin-out, then please do contact us
Iona Silverman, IP Partner M: 0797 387 5468 E: firstname.lastname@example.org
Malin Svanberg Larsson, Corporate Partner M: 0792 160 3252 E: email@example.com