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Acquiring Trademark Rights for Branding Campaign
Client's Business Objective:
Our client, a systems networking company, wanted to launch its new branding campaign along with its new slogan.
The Challenge:
The day before the kickoff of this $250,000 advertising campaign, the client discovered that another company was using its desired tagline in another part of the country and had registered the mark for protection.
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What We Did:
Some very quick research revealed that the competing company was using a mark that was owned by our client. We successfully approached the competitor and negotiated a royalty-free cross license.
Results:
The client was able to go forward with its branding campaign within 24 hours and obtained permanent rights to use its desired marks.
Key Takeaways:
When you have a critical interruption in the execution of your marketing plan, you can often benefit from the assistance of experienced outside counsel who can discover weaknesses in your competitor’s position and hidden value in your existing assets.
Capturing Intellectual Property From Acquired Entities
Client's Business Objective:
The client, a multifaceted Fortune 500 company involved in electronic storage, micro-processing and systems networking, needed to capture intellectual property and know-how from key employees of an acquired company before they exited to other employers. They also needed to take steps to protect the intellectual property.
The Challenge:
The exiting employees understood their system architectures and product lines, as well as how their technologies fit into the systems of our client, but they had little practical motivation to work with us. Furthermore, the acquired company had done little to protect its proprietary technology, and we needed to move quickly.
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What We Did:
We met individually and in groups with the key employees, respecting their professionalism and explaining the legal obligations and rights involved in the transaction. After extensive employee interviews and much patient listening, we identified those technologies and systems most critical to the client by understanding the operations of both the client and the acquired company.
Results:
Within a four-week period, we extracted all of the critical information from the key inventor-developer employees (well before they left the company) and we completed a large number of applications for software/systems patents that would preserve and protect the critical competitive intellectual property advantages at stake.
Key Takeaways:
It helps to have a legal team with experience in identifying, organizing and prioritizing critical systems information. An attorney's ability to understand the company's business and to deal tactfully with those who support is necessary to facilitate sensitive situations.
Maintaining a Portfolio to Maximize Value as Acquisition Target
Client's Business Objective:
Our client, a regional producer of network management systems spun off from a larger company, wanted to clean up its patent portfolio in order to maximize the value of the company as an acquisition target.
The Challenge:
The client wanted to capture the attention of particular suitors who wanted to consummate a deal in the near future. The portfolio consisted of more than 100 U.S. and foreign patents, some of which had chain of title issues, some of which were unintentionally abandoned, and some of which were no longer relevant to the company’s business or objectives.
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What We Did:
When we took over the patent portfolio, our team eliminated the ownership issues by curing chain of title problems with the cooperation of third parties. We also cured the abandonments by quickly updating or amending pertinent patent filings. We facilitated the sale or licensing of properties that were no longer tied to the client’s objectives, and we cut costs by abandoning those filings which were not providing return on investment.
Results:
The client cut its patent portfolio costs, increased its patent-related revenues and successfully sold its business for a significant sum, closing the deal and obtaining proceeds of sale in fewer than three years.
Key Takeaways:
Periodically review intellectual property portfolios to ensure it is being properly maintained and is in alignment with the company's strategic objectives. Do not ignore portfolio problems, even problems that have accumulated over time can be addressed with the assistance of experienced counsel who understand IP and transactional work.
Patenting Health Care Management Devices on a Limited Budget
Client's Business Objective:
The client, a maker of indoor positioning systems that chart human traffic flow and locate critical assets that are transported between rooms inside large hospitals, wanted to develop patent protection for its unique inventions.
The Challenge:
The client was going through a funding process that necessarily limited the budget for patent filings, and there was a business need to secure these filings as quickly as possible.
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What We Did:
Our legal team did a cost-benefit analysis on which patent claims would offer the greatest protection and return on investment for the client. Then we pursued those patent claims before the U.S. Patent and Trademark Office. We also devised an alternative fee arrangement that worked within client’s budget.
Results:
The client’s competitive position was secured and the patent work was accomplished within budget. With a strong patent portfolio, the client was able to secure additional rounds of funding.
Key Takeaways:
The ability to practically assess and devise alternative means of achieving patent objectives that are aligned with business objectives can pay dividends.
Securing Patents Involving Devices and Algorithms
Client's Business Objective:
The client, an international manufacturer of medical imaging devices for in utero observations of tissue abnormalities, sought to build out its international patent portfolio with U.S. patent protections.
The Challenge:
The client’s next round of funding was contingent on acquisition of U.S. patents, and there was a narrow window of opportunity to obtain the funding. Furthermore, the law had recently changed making patent procurement more difficult.
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What We Did:
Our legal team brought the inventor and a member of the client's board of directors to the Patent and Trademark Office for a personal explanation about the development of the device. We demonstrated how the inventor combined unique algorithms with imaging technologies to develop a device for predicting which changes in cellular tissue were likely to be cancerous or pre-cancerous. Our team also produced extensive clinical data and peer-reviewed publications to overcome new and higher hurdles to patent allowance.
Results:
The client received a notice of patent allowance within six months, paving the way for another round of funding and expansion into U.S. markets.
Key Takeaways:
Work with patent counsel to carefully study of legal precedents and prepare for meetings with Patent and Trademark Office examiners.
Transactional Valuation Of IP Rights
Client's Business Objective:
The client, shareholders in a start-up company, had signed an agreement to sell the business to a large European entity. They wanted to avoid damaging post-closing adjustments to the purchase price based on allegations of infringement brought by a third party against the acquiring company (and ostensibly related to our clients’ technologies).
The Challenge:
The European entity was much larger, and had great leverage based on the fact that a deal had been consummated which provided for an escrow to cover liabilities that arose after signing and were arguably related to what they purchased.
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What We Did:
Our legal team looked at the relevant law of infringement and determined that the infringement accusations of the third party, to the degree they held merit at all, were based on technologies that the acquiring company had employed prior to acquisition. Furthermore, we laid out the equitable case for fair treatment of the selling shareholders, many of whom had become key employees of the European entity. We also put on the negotiation table an issue relating to a post-closing performance bonus, arguing that the acquiring company should really pay that bonus (it had been withheld) because our client’s product line had substantially produced the post-closing performance desired (within a certain margin of error).
Results:
Exceeding our client's expectations, we were able to capture half of the escrowed amounts (approximately $2 million dollars) and most of the performance bonus (approximately $7 million dollars) for the individual shareholders and the primary shareholder, the venture capital group.
Key Takeaways:
Lawyers who possess business-sense and people skills and understand the company's critical technologies, are most likely to provide the greatest return on investments in legal services.
