Home | Clients | Case Studies
Commercializing Ethanol - International Out-licensing
Client's Business Objective:
The client, a start-up company that had developed technology for turning agricultural waste into ethanol, wanted to commercialize its discovery with the help of a licensee capable of producing and selling ethanol.
The Challenge:
The client developed its technology based on an in-license from a local university, and that underlying license had to be pressure-tested for sufficiency in Japan, where the client’s best commercial partner candidate was located. There were language issues, cultural issues, and business issues that had to be resolved.
» More
What We Did:
Our legal team successfully negotiated with the university an amendment to the in-license agreement that passed the scrutiny of the Japanese partner. Then we worked out a deal with that partner by negotiating around the clock, with the help of interpreters and trusted foreign associates.
Results:
Within two months, our client concluded a substantial deal with its Japanese trading partner. This deal will enable construction of the first cellulose-based ethanol production plant utilizing wood waste products from construction sites and similar sources in Asia. The license extends to Japan, Thailand, Malaysia, and Indonesia.
Key Takeaways:
It is critical to have a legal team with relevant experience. Many deals today involve university-developed technology, foreign trading partners, and the need for trusted foreign legal associates. It pays to have a legal team that has technical expertise, international experience, and established relationships with foreign associates.
Patent Prosecution for Fuel Cell Technology
Client's Business Objective:
The client, a Japan-based automobile manufacturer, sought U.S. patent protection for its state-of-the-art hydrogen fuel cell technology, which uses oxygen and hydrogen ions to create clean power, with pure water as a waste product.
The Challenge:
The legal team had to work quickly but carefully and thoroughly. Fuel cell technology is still evolving, and there are many competitors in the field working on new fuel cell devices. Furthermore, those seeking to occupy this competitive space have filed many patents, necessitating a careful assessment and planning of all patent filings and claims.
» More
What We Did:
Our legal team worked closely with the client and filed hundreds of patent applications. Utilizing creative prosecution techniques, we worked closely with Patent and Trademark Office examiners to address their customary questions and objections.
Results:
We successfully prosecuted several hundred patents in a five-year period, securing comprehensive patent protection for the client’s fuel cell technology.
Key Takeaways:
When business objectives require swift action and careful patent positioning, it pays to have a legal team that is experienced in dealing with the U.S. Patent and Trademark Office, has a practical sense of how to manage patent prosecutions quickly and efficiently, and can chart a course for likely success.
Patents for Green Technologies
Client's Business Objective:
The client, an inventor and his primary investor, sought to protect and commercialize a unique technology that enabled rapid and convenient composting of large quantities of various organic materials blended together.
The Challenge:
The target for commercial partnership was a China-based entity, and the technology was being updated and perfected by our clients as talks were commencing. We had to work with the inventors to quickly file a provisional patent application to protect our client’s rights without stalling talks between the parties.
» More
What We Did:
Our legal team, which featured professionals with engineering and business backgrounds, worked together with the client, prompting a fine-tuning of the inventive device in a way that not only enhanced the likelihood of patent protection but improved the quality and functioning of the device.
Results:
The client’s device was enhanced in a way that made it more protectable and potentially more profitable and the provisional application was promptly filed. Negotiations ensued between the parties and they quickly reached preliminary agreements on the basic outline of a commercial partnership.
Key Takeaways:
It pays to invest in a legal team that not only has a sense of business urgency, but relevant practical experience as well as intellectual property knowledge.
