You are celebrated as one of the most experienced technical and business experts in the licensing industry. What is the secret to your success?

It’s a mindset. Patents are assets – they are the key mechanism by which a company’s innovation is captured, secured and protected. They are one of the most secure methods of protecting an organisation’s valuation and market presence.

I take a pragmatic approach to IP monetisation. Treat patents as active business assets, akin to a dormant factory. They should be actively exercised, reviewed, culled with revenue and cost targets and aligned with corporate goals. 

Litigation, licensing and claim charts are the legal mechanisms through which to enforce intellectual property as you would a contract, but it’s equally important to view the patent as a product itself and consider its value and the benefits for licensees and buyers.

In your view, what is the key to a world-class licensing strategy? 

Effective patent portfolio management demands a combination of legal, technical and business acumen. You need all three to manage a high-performing portfolio. 

Licensing requires a skilled legal approach to be successful, however it ultimately boils down to a business transaction, which requires a cost-benefit analysis. We must teach prospective licensees what the innovation is about, how it applies and the benefit of taking a licence versus the alternative.

Ultimately, someone must sign the cheque. In addition to demonstrating use, you must help to build your client’s business case so that the client can convince their management of your proposal’s value. You need to provide them with the legal argument, use case and financial scenarios that relate to your proposal as the tools they can use to do this.

On a macro level, managing a portfolio requires dedicated budgeting, much like marketing a product. Patents should be reviewed against corporate strategy. Ensure the strong assets remain useful to current plans, sell strong assets that are no longer needed and sideline the rest to reduce costs. 

Get your patents reviewed and organised by external experts first. Identify the strongest assets and – if others are using them – document it. 

A clear-cut, self-evident claim chart is your best weapon. It should say “here’s my invention, here’s your product and here’s how you are using it” in a simple, graphic format that teaches as well as documents. Evidence of use is the strongest tool you can use to achieve a favourable, accelerated settlement and the clearest demonstration of value. There’s nothing more effective.

What are the biggest challenges surrounding licensing or negotiations within new markets, and how can one overcome these? 

You must understand the supply chain, competitors and market challenges of the prospective licensee and use these to your advantage. Again, effective licensing distils down to the business case – what is the risk, what are the alternatives and what is the least expensive way to resolve a dispute? 

There are myriad ways to use the patent system during negotiations, but opponents will also use these mechanisms to stretch discussions out for months, even years. Nothing is as effective in increasing settlements, decreasing negotiation times and reducing the expense of licensing negotiations as strong presentation of evidence of use – a clear, easily understood demonstration of how a product may use your patents. 

An individual with final financial approval on a licence agreement, especially an executive who is focused on a new product in a new market, may not be well versed in patent law or technology. It is our responsibility as licensors to give them confidence in their decision to take a licence. You have to teach and convince first, then the details of the agreement become much easier.

As a partner at IP Research Group, what does effective yet inspiring leadership look like to you?

Leadership involves setting a clear direction, articulating a compelling vision and establishing strategic goals while empowering your team to excel in their areas of expertise. Employees are a company’s greatest asset. By providing direction, sharing your vision and challenging your team with defined goals along with the necessary resources, budget and support, you enable them to perform at their best. A well-equipped, motivated and empowered team will drive exceptional results in any organisation.