Intellectual Property Commercialisation Corporate structures, acquisitions and disposals

Intellectual Property
Intellectual property (IP) underpins
modern business. Whether it takes
the form of a new invention, design,
a new software program or any other
form of intellectual property, the
use, protection, exploitation and
enforcement of intellectual property
rights is critical to success. Our
commercial intellectual property
lawyers are experienced in all aspects
of non-contentious IP law; we work
with our clients to help them to
maximise the commercialisation
opportunities available for their IP.
Our clients range from small inventors
through to multinational corporations,
encompassing all aspects of
development and commercialisation,
from advising on licensing terms and
collaborative research agreements to
technology transfer arrangements,
joint ventures and global exploitation
Documenting the deal
A key to commercialising any IP is to
make sure that any commercialisation
deal is documented, in an easy to
understand and practical form. We are
experienced in drafting, negotiating
and advising on all forms of commercial
documentation, including:
• research and development agreements
• joint venture agreements
• licences, including technology
licences, patent licences and trade
mark licences
• software development and licensing
• franchising agreements
• IP assignments
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• manufacturing, supply and
distribution agreements.
Corporate structures,
acquisitions and disposals
Establishing corporate structures is
an essential part of the exploitation
of technology. This includes ensuring
that the intellectual property resides in
an entity to maximise asset protection
and establishing appropriate trading
vehicles. Griffith Hack has significant
experience in this area, including the
establishment of appropriate structures
to accommodate the needs of venture
capitalists and other investors.
We also have a strong track record in
IP aspects of acquisitions and disposals
and work with clients to restructure IP
Joint ventures
Due to the escalating costs associated
with research and development,
joint ventures have become one
of the preferred structures for
commercialisation of IP. Griffith Hack
has extensive experience setting up
joint ventures involving local and
international partners, in both the private
and government/academic sectors. Our
lawyers have particular experience in
working with complex, multi-party joint
venture arrangements, including cooperative research centres (CRCs) and
ARC Centres of Excellence.
Capital raising
The raising of sufficient capital is
essential for technology to be effectively
commercialised. Griffith Hack focuses on
private capital raising, assisting clients in
obtaining both seed and venture capital
funding. We have advised a number of
clients on moving from the early seed
stage through to mezzanine and preIPO funding. We are also experienced in
providing intellectual property reports to
be included in prospectuses.
Due diligence and IP audits
An IP audit or due diligence exercise is a
comprehensive analysis of a company’s
IP assets and the systems used by the
company to protect those assets. This
analysis enables implementation of longterm IP management which ensures that
IP assets are:
• properly identified in the future
• protected to ensure future value as
an asset or safeguarded as a valuable
revenue stream and provide a
competitive edge
• brought to account on a company's
balance sheet (therefore boosting the
net worth of a company's business)
• increasing a company's profitability
through licensing, selling or raising
finance against them.
IP assets may reside in many areas of a
business. In conducting an IP audit, our
lawyers work with our associated patent
and trade mark attorney firm to review
the organisation’s business operations
to identify and determine what IP is
important to the organisation.
E-commerce, the Internet
and the World Wide Web
Griffith Hack Lawyers has strong
expertise in the e-commerce area.
Members of the Griffith Hack team
regularly advise clients on a variety of
issues relating to this area, including
verification, validation, enforceability
of terms and conditions, electronic
product distribution, support, merchant
agreements, privacy, data collection and
usage issues. With this wide-ranging
experience, we have developed a sound
knowledge of the technological and
business issues involved in this area.
Griffith Hack also assists corporations
with Internet privacy policies and website
terms and conditions of use.
Griffith Hack also has assisted many
of our clients in obtaining appropriate
government assistance through various
grants and other schemes on offer.
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Intellectual Property Commercialisation
Examples of our experience
Our depth of skill and experience in
commercial IP is considerable. Our
commercial IP team has experience in
a very broad range of contexts – from
simple IP licences and assignments
through to highly complex, multimillion
dollar IP driven corporate arrangements,
joint ventures and strategic alliances.
We also represent clients in commercial
transactions involving information
technology, media, telecommunications
and entertainment.
Recent matters
representative of our
experience include:
• Representing a large global mining
company in relation to the preparation
and negotiation of various agreements
with researchers, suppliers and
customers concerning international
trade and IP development for copper,
nickel, uranium and iron ore. This
ongoing highly complex project
also required Griffith Hack to lead
the development of methodology
and concepts for the structure and
operation of the collaboration.
• Representing Australia’s preeminent solar energy developer and
manufacturer in the preparation
and negotiation of agreements with
the Federal and State Governments
and with various suppliers and solar
energy customers.
• Representing a large Australian
biotechnology company in the
preparation and negotiation of
agreements for the licensing of certain
software and products relating to
tissue transplants in humans in the
USA, South America and Europe.
• Advising IP owners including research
entities on IP capture and university
issues in particular in view of recent
legal developments in respect of
employee IP.
Key contacts
Russell Berry
T: 03 9243 8300
[email protected]
John Lee
T: 02 9925 5900
[email protected]
Paul Mallon
• Represented Coleman Inc in the
acquisition of the iconic Australian
ESKY brand and worldwide business
from the receivers of Nylex Ltd.
T: 08 9213 8300
[email protected]
• Licensing agreements on behalf of
an Australian company to the CSCI
(Computer Systems Centre Inc) in the
US regarding a patent for a computer
algorithm that related to management
systems and service governance.
Russell Berry
T: 03 9243 8300
[email protected]
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• Advising and conducting a due
diligence for a global manufacturing
company on that company’s proposed
acquisition of industrial pump and
vacuum technology.
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