Case Studies
Developing
"We have found someone we want to work with but how can we ensure we get what we want out of the collaboration and keep costs to a minimum"
Our client is a pharmaceutical company who amongst other activities uses contract research organisations to conduct certain research and deliver specific results. Often the projects are complicated, conducted over long periods of time and change significantly as the project progresses. An understanding of the scientific imperatives is key, in particular to negotiations around payment terms, IP and liability. Working closely with our client and the CRO, we assisted in the drafting of the heads of terms, flushing out at an early stage the key business drivers for both parties, including what allocation of legal risk both were prepared to accept. Accordingly, we were in a position to draft a very fair first draft of the collaboration agreement, which resulted in fewer subsequent contract negotiations and reasonable legal fees for our client.
"We have a great idea but we need to know what rights we have and how we can best protect it"
Our client has developed some (as yet secret) software and processes relating to a new way of receiving information. They came to see us and wanted to know (i) what IP they had; and (ii) how best they could protect their assets. We advised that the idea was patentable and conducted some very basic searches to ascertain that there was nothing obviously conflicting in the public domain. We further talked through the pros and cons of patenting and whether it fitted with our client's business objectives. We subsequently matched our client with the right patent agent for their technology and budget, and worked closely with that patent agent to ensure that the applications were as robust as possible, not only from a prosecution point of view but also with future litigation in mind.
"We have a great idea but it builds on that of our ex-employer's. Can we do it?"
Our client is a start-up software company. They had already sought advice from an IP barrister who said "don't bother - you can't do it - you infringe". Our client came to see us for a free one hour consultation - desperate - and we gave them a fixed price to produce a "survival map". This map outlined how to avoid copyright infringement, breach of confidentiality and applicable restrictive covenants and was the life-line our client's business needed. Further, when our client received a letter before action from their past employer we were able to successfully (and with confidence) respond to quash any possible legal proceedings.
Protecting
"We think we might infringe a patent and are at risk of being sued - what comfort can you give us?"
Our client is a pharmaceutical company and was considering launching a product for a medical use which was covered under a third party patent. Our client knew the product had great potential (and had been recognised for this in a particular field for at least a number of years). We conducted a full novelty, inventive step and sufficiency assessment of the patent, which involved researching prior art and speaking to skilled experts in the relevant field. We concluded that the patent was invalid. Armed with this information our client went ahead with their planned commercial activity, confident that if the Claim Form arrived, a settlement should be more easily negotiable, failing which a robust defence could be prepared.
"I have developed a software product for a company and now they want me to assign my rights. Do I have to? And what is my legal position?"
Our client is a software consultant operating through a limited liability company. He'd agreed to work for a reduced rate in return for a minority shareholding in a company but there had never been any mention of IP ownership, or a shareholders agreement put in place. We advised our client on his legal position, examining in detail the factual history of the relationship between him and the entity for whom the software had been developed. We successfully negotiated a stand-off, with no assignment of rights being executed despite the opponent previously threatening to sue for a declaration that it owned the legal and equitable title in the copyright in the software, a fact which our client had always denied. Whilst necessary for our client's continuing business, this process was both time consuming and costly. We always advise our clients of the importance of obtaining clarity about the obligations and rights of each contracting party from the outset. Here, had an appropriate contract been agreed from the outset, both parties would have had legal certainty and avoided the subsequent litigation costs.
"We have received a letter before action alleging trade mark infringement and passing off but it is our name! How can you help?"
Our client runs (and has for a number of years ran) a small consultancy operating under name X. X is also a food brand in the UK owned by household name Y.
Our client received a letter from Y alleging both trade mark infringement and passing off, seeking significant damages and their legal costs. We advised our client on a defence strategy, namely that the trade mark was strongly at risk of being invalidated through our client's past use, and that Y most likely did not have sufficient goodwill in brand X at the time our client started trading to substantiate a claim under passing off. We wrote a strongly worded response letter pointing out these facts and refused to sign undertakings or change our client's name. Without prejudice settlement discussions then ensued, resulting in our client agreeing to re-brand, in consideration for a significant sum of money, which included payment of our legal costs.
"We need to get this website taken down, and quick. Advise us"
Our client contacted us regarding a website that claimed it was authorised by our client to do certain acts on its behalf, including collecting licensing revenues. The website had the potential to be extremely damaging to our client's business and our instructions were to ensure the website was taken down immedaitely. We drafted a very aggressive letter before action alleging seven different causes of action including trade mark and copyright infringement, passing off, libel and fraud, and demanded that the website was taken down immediately. We also co-ordinated counsel in three specialisms, so our client could make an emergency application for an injunction on a tight- timescale. Without prejudice discussions very rapidly resulted in the website being taken down on a permanent basis.
"We have been sued - and we are guilty - what now?"
Our client runs a small business in the electronics field, and had (inadvertently) committed actionable trade mark infringement and, possibly, passing off; as well as being liable for breach of contract. Our client had been served with a Claim Form and when they contacted us had only 14 days to serve a Defence. The Claimant was claiming up to £100,000 in damages plus their legal costs. We advised our client on Defence and Counter-claim strategies and the true quantum of the damages that were payable, and successfully negotiated a settlement which totalled circa £16,000 inclusive of both parties costs.
"We need a more cost effective way to handle the experiments as part of our ongoing multi-jurisdictional litigation seeking to invalidate a patent"
Our client is a pharmaceutical company involved in multi-jurisdictional litigation. They needed a more cost effective way for the repeat of an experiment to be managed in relation to Irish litigation proceedings. We worked closely with our client and their Irish & English lawyers to deliver this service in a seamless fashion, inputting in to procedure, strategy, party & party correspondence and drafting the final report, which detailed experiments lasting nearly 11 weeks.
"Please stop these people using our trade marks as Google adwords in their advertising campaign"
Our client is an internet business with a large number of subscribers. Another internet business operating in the exactly the same field as our client was using our client's business name both as a Google adword and in Google banner advertising. We wrote a strongly worded letter before action alleging trade mark infringement and passing off and successfully negotiated a settlement on behalf of our client wherein signed undertakings were entered into and damages and a proportion of our legal costs were paid.
Exploiting
"We have found a commercialisation partner, they have given us a draft agreement. Can you help us get the risk/opportunity balance right?"
Our client operates a software business servicing the gaming industry. Their products are also the subject of UK and US patent applications. Our client agreed heads of terms with a potential commercialisation partner (a FTSE 100 company) and sought advice from us on the draft commercialisation agreement. There were a number of exceedingly onerous terms in the commercialisation agreement, including assignment of patent rights, unlimited liability for our client, entirely unworkable indemnities and wide-ranging warranties. We stood our ground and were able to successfully negotiate a way through for our client, resulting in a commercialisation agreement that reflected our client's commercial drivers, ensured our client retained its IP (most important!) and was not burdened with a level of risk which outweighed the benefit of entering into the agreement.
"We need an enforcement strategy
Our client manages and enforces IP rights owned collectively by a group of multinational companies. Our client knew that there were a large number of companies infringing these IP rights and wanted to send a strong message to the market that this was not acceptable. We successfully tendered for the work and put in place an enforcement strategy tailored to our client's budget and business objectives. We consequently recouped a significant portion of licence revenue, together with written assurances from various companies that they had not, in fact, infringed. Following this action the number of companies voluntarily approaching our client for a licence has dramatically increased.
"We have a patent portfolio ? what can we do with it?"
Our client owned a small portfolio of software-based patents. The costs to obtain the patent portfolio had been significant, as were the maintenance costs attached thereto. A high profile infringer came to light and the business needed advice in terms of how next to proceed. We were to hand, assessing the merits of the matter and presenting strategic options to the Board of Directors.
For business reasons the Board decided not to pursue the infringement claim; but the issue prompted our client to review its internal patent policy, decided specifically, whether patent ownership coincided with its current (and future) business objectives. Following a whole scale review wherein we helped to assess the competitive leverage of the portfolio including an assessment of validity and the costs of keeping it alive, the Board decided to maintain only one patent family.
"We have found a company to buy, but how do we know that they own what they say they do?"
Our client is a digital media company who wanted to acquire a company so that its product portfolio could be expanded. Our client suspected there might be some problems with the IP and sought advice from us. We conducted a due diligence exercise which targeted those aspects which were key to our client (brand, website, digital content). The company being acquired had a rather complicated background. Its assets had been moved around considerably, including through now liquidated off-shore companies at various stages. Further, no onward IP assignments had been put in place nor had any trade marks been applied to be registered, despite the brand being an important part of the acquisition. Lastly much of the work conducted by the company was done on a contract basis, so there were significant holes in its IP ownership. We devised a strategy with our client to assist the company to collect together as much of the IP rights as possible prior to it being bought, and then drafted very specific IP warranties and indemnities for the sale and purchase agreement, so that our clients risk was minimised as much as possible.