Sfruttare la PI

 

 

 

 

 

Transfer of rights and licence agreements

A proper management strategy of the intangible assets must imply, in addition to the direct exercising of the economic exploitation rights (e.g. directly distributing the intellectual work, marketing the invention relating to the patent, using the design/model, affixing the trademark on own products, etc.), and even the stipulation of transfer or licence agreements.
A contract for the transfer of industrial property rights is, essentially, a contract by which the owner transfers all or some of the economic exploitation rights to a third party (obviously moral rights cannot be transferred), upon payment of a fee either in a single transaction or by instalments. In doing so, the owner cedes the title to those rights and they are acquired by the transferee.
With licence agreements, however, the owner (licensor) retains the ownership of the rights but grants the right to exercise certain rights to another party (licensee) for a specified period of time – rights include being able to affix the owner's trademark to the third party’s products, the right to market the invention relating to the patent, and so on – upon payment of a fee that normally also includes a fixed part and a variable part which is proportional to the commercial benefits enjoyed by the licensee through the use of the licence (royalty). In this case, the best strategy must be assessed, considering the specific objectives to be achieved. Everything depends on the protection granted to the owner's rights: the greater the extension, the greater the possibilities for maximising the commercial benefits. For example, if an owner only protects a trademark through Italian registration only, a trademark licence cannot be granted for use in the French territory. If, on the other hand, an owner has obtained Community registration, the same licence agreement can be stipulated not only for the Italian territory but throughout the entire Community.

 

Know-how and transfer of technology

Investing in research and innovation not only adds a competitive advantage, but also gives companies the option of commercially exploiting the results. In addition to the opportunities offered by the exploitation of registrations and patents (mainly by means of licence contracts), companies can exploit their know-how, or those innovations and knowledge - even if they do not often meet the patenting requirements - that have a strategic decisive importance. The know-how includes industrial knowledge (such as the perfect temperature to perform a certain process or the perfect configuration of a computer system) and commercial knowledge (such as the knowledge of reliable contacts in foreign markets, of local administrative practices, of efficient advertising strategies and so on). Such information is protected by the rules of the so-called industrial secret provided by art. 98 and 99 of the IPC and nothing prohibits companies from commercially exploiting them through specific agreements aimed at transferring technologies or knowledge (including by means of franchising contracts) or arranging training courses for employees from other companies.

 

Merchandising, franchising, co-branding

Additional opportunities are offered by using merchandising, franchising and co-branding agreements to obtain the maximum economic advantage from the industrial property rights.
The owner of a trademark, through a merchandising agreement, grants the licensee the right to affix the trademark on the licensee’s own products or with services (normally relating to a different market to that of the owner), as long as the trademark is also protected in the category/class of products made by the licensee. Through this commercial strategy, the owner can benefit from the carry-over effect of its own trademark (especially if known), and can greatly expand its potential.
Through franchising (or commercial affiliation governed by Law 129/2004) a company can grant a person (defined as an affiliate or franchisee) access to and use of their own industrial property rights - relating to trademarks, trade names, patents, utility models, designs, copyrights, know-how, technical or commercial consultancy - inserting this new affiliate into the existing network of affiliates distributed across the territory, with the purpose of marketing certain products and/or services. Generally, in view of these concessions, the affiliate recognises a fee towards the owner-company which is generally in proportion to the affiliate’s annual turnover, together with the commitment to meet the owner-company’s production and qualitative standards.
A further opportunity is given by so-called co-branding or the agreement through which a company can associate its trademark with that of another company to increase the attractiveness of the products or services on which the two marks are affixed or to optimise the costs of an advertising campaign.

 

IP Finance Tools

Industrial property not only performs a defensive function for the company, but it can also be monetised, meaning that it can be transformed into a further source of income for companies. The traditional legal or defensive approach is accompanied by a business oriented approach in managing and assessing industrial property, understood as a competitive and financial tool. There are many ways of monetising industrial property assets with respect to selling or licensing agreements. The industrial property can be used to access new sources of financing, such as traditional financial tools (loans, leases) or structured solutions, specifically tailored to the needs of the company (IP Financial tools). These offer great business opportunities to companies as well as to financial institutions: companies have new financing options, taking advantage of inactive or undervalued assets; financial institutions can increase their intermediation margins and provide loans guaranteeing themselves real business value with representative assets. Below are some IP Finance tools:

  • IP LOAN: intellectual property is used as collateral for a loan.
    Function: It opens up a wider range of funding sources thanks to a more active use of the intellectual property.
    IP Asset: Patents, Copyright, Trademark.
  • IP SECURITIZATION: the flow of payments (royalties) is transformed in tradable securities placed with investors.
    Function: It gives intellectual property owners the option of seeking financing based on the anticipated income deriving from the use of its intellectual property or by granting relative rights to its intellectual property.
    IP Asset: Patents, Copyright, Trademarks, Franchising contracts, Merchandising contracts.
  • IP SALE AND LEASE BACK: transfer of the intellectual property to a leasing company and simultaneous signing of a leasing contract.
    Function: It gives intellectual property owners the option of seeking financing through the sale of the asset with the option of a possibility of lease back.
    IP Asset: Patents, Copyright, Trademark.

INFORMATIVA

Il sito utilizza cookie tecnici per migliorare i servizi offerti e ottimizzare l'esperienza dell'utente. Proseguendo la navigazione - senza modificare le impostazioni del browser - accetti di ricevere i cookie. Se non desideri ricevere i cookie, modifica le impostazioni del tuo browser, ma sappi che alcuni servizi non funzioneranno correttamente. Per saperne di piu'

OK