Securing Growth By Control

• Published date: 04 April 2023
• Subject Matter: Intellectual Property, Licensing & Syndication, Patent, Trademark
• Law Firm: Rouse
• Author: Mr Erik Oskarsson, Thomas Randes and Hannes Ludvigsson

Securing growth by control

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...