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Maximising the potential value of intellectual property (IP) requires legal, technical and commercial skills

Traditional product manufacturers are seeing revenues from existing products decline as a result of market saturation and competition from global brands and agile new entrants. At the same time, the increasing cost of R&D is limiting the rate at which they can launch new products.

Increasingly companies are turning to their IP portfolios as a potential alternative source of value: from licensing, outsourcing or sale of unused assets. They therefore need to understand the strengths of their patent portfolio: to determine where their patents are being infringed and negotiate licences; to sell unneeded patents to organisations that are better placed to use them; and to find potential users in other industries who might want to license patents.

The challenge is to identify which IP is valuable and exploit it to the full. Patent valuation is typically seen as a legal question but an exclusively legal view of IP is not sufficient to demonstrate value.

Over many years, the legal profession has perfected the contractual structure for embodying IP. While the contract seeks to provide protection and certainty over IP transfer, taking on IP is not simply a legal transfer of title – it requires a number of other factors for success:

  • a solid understanding of technology, science and product development to recognise what is a ‘good’ embodiment of IP and what is ‘bad’ or incomplete

  • excellent stakeholder and project management as it is often the underlying ‘know-how’ that makes the IP attractive and much of this ‘know-how’ is intangible – in peoples’ heads

  • a pragmatic, risk-based approach to focus on the key elements of the IP embodiment and make sure that they are of the right quality and value.

PA’s independent arms-length IP Assurance Service focuses on these three areas to make sure that the acquirer is able to take on the IP and benefit from it as quickly as possible.

PA’s IP Assurance reduces re-tendering risk for Transport for London

Transport for London (TfL) entered into a contractual arrangement with the supplier of its existing Oyster smartcard ticketing service to transfer the intellectual property involved in delivering this highly complex service. 

TfL did this so they can conduct a more competitive procurement process for the service at the end of the current contract period. TfL needed to be satisfied that the IP transferred was sufficiently comprehensive and of the right quality for a third party to be able to take on the service, continue to operate and maintain the equipment and make future enhancements to the services.

PA worked with both TfL and the supplier to deliver a process for analysing and improving the quality of the IP. The process required both strong technical content knowledge and diplomatic stakeholder management capability. We have been applying the verification process to over 100 modules that comprise the whole Oyster system.

As a result of our work, TfL has increased confidence in the IP that has been delivered and the risk associated with the future re-tendering process has been reduced.


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Contact
Tim Devine
Wireless telecommunications
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