The first step in moving forward with any business development or licensing program is to jointly assess the markets, technologies, and IP of the licensor to identify opportunities, strengths and weaknesses. Fergason licensing then develops an execution plan to monetize the client's assets through joint development and licensing programs.
Key aspects of analysis and plan include:
- Patent portfolio
- Technical know how and trade secrets
- Value proposition
- Target partners and licensees
The plan must be especially sensitive to possible legal actions that the owners of competitive IP may take against the licensor.
Once the strategy and priorities for the execution plan are set, Fergason Licensing develops the entire range of support documents necessary for a successful program. Licensing presentations covering the technology, value proposition, and IP are finalized. Proposed licensing term sheets developed. Claim charts completed for infringers. Direct face-to-face meeting are scheduled and completed with all high priority licensee targets. License agreements are then drafted and negotiated with licensees.
The ownership of technology and IP remains with our client licensor. The client retains all rights and obligations of ownership including patent prosecution. Fergason Licensing supports the client in this process with the creation of a strategy for new and foreign filings, as well as monitoring on-going prosecution cost and effectiveness.
Assertion, Litigation Strategy, and Support
has failed. Should legal filings prove necessary, FL supports the litigation process for its clients by supporting the customer's outside law firm to ensure that the filing is handled properly and in a cost effective manner. During the past decade of soft licensing and sale of IP, no legal actions or declaratory judgments have been filed against Fergason Licensing or its clients.
Trade marking and branding new technologies can prove to be a very valuable additional piece of an IP strategy. We work with our clients to develop, market and sell branding as a key part of the licensing program.
Servicing Licensees and Royalty Enforcement
A successful licensing program with running royalties is only the beginning of the life of a license. Servicing and enforcing the license then becomes an on-going responsibility. The Fergason Licensing team has proven its capability to enforce reporting obligations of licensees, audit royalty reports against third party market reports, and manage audits of licensees, if justified.
Licensing Supply Chains
infringement of IP at more than one level in the supply chain. Recent court decisions require a licensor to take a more sophisticated position with branders, OEMs, and component suppliers.
Joint Development, Sale, and Pooling of IP
While Fergason Licensing's goal and specialty is licensing, the technology and IP must be ready for volume manufacture. Sometimes additional development is necessary for commercialization and necessitates a joint development program of the Licensor and initial licensees. We support the process of completing joint development agreements as an important part of some licenses. Sometimes our license promotion and marketing efforts result in a potential licensee making an offer to buy some or all of the technology and IP. If approved by the licensor, Fergason Licensing will negotiate and conclude agreements for the sale of IP. There are also increasing opportunities to pool patents and to create industry standards for the use of a family of IP owned by a number of companies. Fergason Licensing will represent the patent owners in assessing such an opportunity.