Intellectual Property Commercialisation 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 arrangements. 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 agreements • franchising agreements • IP assignments GH 6172 Sep 10 • 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 portfolios. 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. Working With Clever People 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 Melbourne Russell Berry T: 03 9243 8300 [email protected] Sydney John Lee T: 02 9925 5900 [email protected] Perth 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 Brisbane T: 03 9243 8300 [email protected] GH 6172 Sep 10 • Advising and conducting a due diligence for a global manufacturing company on that company’s proposed acquisition of industrial pump and vacuum technology. Working With Clever People