Every business uses and generates intellectual property rights. They are often the vehicle to build, maintain and expand a business and its freedom to operate. At Marriott Harrison, we understand the crucial importance of IP rights – from a legal, strategic and business perspective.
Our expertise covers all types of IP relevant to our clients. This includes registered rights such as patents, trade marks, design rights, circuit layout rights and domain names and unregistered rights such as copyright, database rights, know-how/trade secrets, passing off, unregistered design rights and moral rights.
We have many years’ experience drafting, negotiating and reviewing the full range of contracts relevant to the creation, development, ownership and exploitation of intellectual property. These include licence, franchise, sponsorship, joint venture, collaboration, material transfer, development and consultancy agreements.
The most conventional model for commercialising intellectual property is licensing or cross-licensing. We have experience with critical commercial issues such as:
- appropriate licensed fields, performance obligations, bases for calculating royalties, industry-typical and product specific royalty rates;
- milestone payments;
- provisions addressing compounding royalties (“anti-stacking”); and
- steps to mitigate against the insolvency of the counter-party – a critical issue in the current environment.We are regularly engaged to undertake IP audits whereby we investigate the entitlement of a business to use its intellectual property as well as to review the arrangements in respect of which its Intellectual Property may be exploited.
We are regularly engaged to undertake IP audits whereby we investigate the entitlement of a business to use its intellectual property as well as to review the arrangements in respect of which its Intellectual Property may be exploited.
We have experience analysing registered and unregistered IP portfolios in connection with M&A and financing transactions, as well as drafting associated transactions and transitional agreements. Finally, we have experience in attending to the recordal of assignments, licences and security interests.
We also advise in relation to promotional materials and conduct to help clients comply with the range of laws regarding misleading advertising and unfair competition.