However, I know it is going against the tide of my colleagues in the industry to suggest an alternative structure to centralization of the management of IP.
Especially in the area of IP commercialization, there are strong reasons why it can make sense to have an independent business unit charged with the responsibility of commercialising IP. I would go so far as suggesting that it may even make more sense to locate the business unit in another jurisdiction.
Below, I outline ten reasons for an independent IP commercialization business unit. While IP encompasses areas such as copyright and trademarks, for simplicity I will limit my illustrations to licensing of patents.
- Mismatch with existing skills
Traditionally, intellectual property has been the preserve of the legal department. That is the place where patents applications, invalidation defences, infringement proceedings, contract drafting, etc. are implemented and managed.
An effort to commercialize IP is an opportunity for the previous cost centre to become a profit centre. Of course this is an attractive proposition for the legal department.
However, while a deep knowledge of the patent processes and the legal protections are essential, the traditional legal skills are not the same as the commercial skills required to run the business of negotiating licenses. Running an IP commercialization business like a legal department is a sub-optimal arrangement. I will deal with this issue in more depth in a future blog.
- Potential conflicts of interest at lower levels
Patent protection means that the owner has the advantage of (a) protecting market share or (b) ensuring a premium price.
The decision to commercialize will bring income directly from the IP, but it opens up the market to competitors who were previously blocked. While the IP income may be worth more to the corporation than the incremental profits that would arise from keeping the market closed, opening the market has a direct result on the sales figures of the parent company’s products. This can be strongly resisted by people whose performance is directly measured in sales of products. Locating the IP management in a separate business unit avoids this direct conflict of interest.
- Different cost
As an illustration, a manufacturing company may enjoy net profit margins in the region of 10%. An IP company does not have Cost of Sales or manufacturing overhead, so the net profit can be in the region of 90%. If the 2 businesses are combined in one unit, it does not give a correct picture of either business.
Different cost structures will require different measures of performance, staff incentives, investment decisions and styles of management.
- Chinese walls, Competition law
Typically, the consumers of intellectual property will be in the same industry as the owner of the IP. Often, the royalty is based on the usage of the patent (e.g. units sold, volumes of material, etc.). This information must be reported for the purposes of royalty calculation.
Licensees will be reluctant to give confidential information about their business activities directly to the owner of the IP, but they may give it to the licensing company if they are satisfied about the safeguards regarding confidentiality.
A further aspect of this concerns the requirements under antitrust regulations. Competition law frowns on any relationships that would reduce uncertainty about the conduct or potential future conduct of a competitor. Safeguards can be built into the structure of the business unit.
- Friendly jurisdiction
Globally registered patents may have global application. However nationalistic sentiments are a real feature of international business. Despite valid business reasons, there may be resistance by (say) a French company to do business with a German company. Similarly, a Chinese company may not like the idea of paying licensing fees to a Japanese or American patent holder. Even though it is clear to all parties that royalties will eventually go back to the original owner, it can sometimes lessen the direct “pain” to pay via a licensing company based in a “neutral” jurisdiction.
- Defensive barrier
One of the defences against a patent infringement action is to countersue. When Company A tries to exert its patents against Company B, Company B exerts his own patents back against Company A. When a non-practising company sues for infringement, they cannot be sued by Company B because they do not make anything.
Using a non-practising company to assert patents eliminates one of the defensive tools at the disposal of the alleged infringer.
- Focussed operation
The activities of the business unit are focussed entirely on the activity of commercializing the intellectual property. There is interlocked activity between the technical, legal and commercial people. Each has a solid understanding of the other’s disciplines. When a potential licensee telephones one of the IP marketing specialists, the legal specialist is able to advise him immediately of the impact on other licensees.
Everybody knows that their focus is to maximize the exploitation of the intellectual property.
- Business legal environment
Some countries have legal environments that are more hospitable to IP commercialization. Their legal systems may offer more certainty and be natural homes for such activities. In recent years, several jurisdictions have introduced IP-friendly tax regimes to encourage smart-economy activities in various forms.
As mentioned above, in many jurisdictions, IP activity is subject to different tax regimes to the mainstream business. If the IP management activity is in a self-contained entity, its activities will be fully consistent with the tax regime.
- Access to skill base
IP commercialization only requires a small number of people to manage a substantial business. However, those people operate in a niche area that requires special skills. When a region develops a reputation for certain competencies, it tends to attract more people of a similar ilk. This leads to clustering of competencies in those areas.
About the Author:
Raymond Hegarty, based in Luxembourg, is CEO of IP Foundation. He has broad experience of intellectual property and global technology transfer.