Intellectual property (IP) commercialization involves a range of activities and skills. The work often involves many people, but in smaller companies the same people will need to play several roles.
Understand your IP capabilities
Creators and inventors of IP provide critical information about the creation or invention. They provide critical insight into the stage of development of the technology, how it works, current limitations and potential improvements.
Creators and inventors may provide valuable insight into the state-of-the-art of a given technology, competitors, as well as potential commercial partners.
- If more research and development are required, what IP will be created?
- What IP do the competitors have?
Selecting the right partner and financial terms
Business and marketing skills are useful when taking a critical look at the commercial opportunity. This means making some assumptions to estimate the value of the IP.
- What is the value of the IP?
- When can sales begin vs. how long is the IP protected for?
- Where is the target market vs. where is the IP protected?
- If you are licensing, is there a risk that a business partner could develop their own IP and then terminate the license?
Understand legal implications
Legal skills are required to make sure that any contracts you enter into reflect your intentions. This means understanding and assessing the various risk factors and limitations expressed in contracts. This is especially important in licensing and franchising deals.
- Who will be responsible for maintaining, monitoring and enforcing IP rights?
- Risk assessment: What happens with the IP rights if the other party is sold? Goes bankrupt? Defaults on payments?
Since IP rights give the owner the right to exclude others from using those rights without the IP owner's permission, it is essential that you document the ownership of the IP.
- What parts of the creation or invention are protected through trademarks, patents, copyright, industrial designs or as a trade secret?
- Does the scope of IP rights cover the creation or idea, as it is used in the marketplace?
- Are the IP rights registered or still being examined by the IP office?
- What are the risks that applications for IP rights will be rejected and what effect will that have on the proposed arrangement? If you have formally registered your IP, what are the risks that someone can invalidate your registration or circumvent your IP rights?
- How much will it cost to maintain the IP rights? Who should bear that cost?
As these issues are very complex, it is strongly recommended that you seek advice from an IP professional.