What led you to found your own firm and what advice do you have for anyone considering doing the same?
I completed a two-year fellowship that focused on international investment in science and technology, and the synergies in capability from certain jurisdictions which could be brought together for the benefit of developing countries. After completing it, it so happened that I was approached to undertake some legal work. I am fortunate that, both as a lawyer and as a company secretary, I was involved in the creation of a number of start-ups. From the beginning, I treated the firm as a start-up: having a business plan, a strategy, regular strategy reviews to keep myself honest and realistic, setting and being mindful of short, medium and long-term goals. As the team grew, so did the importance of a structured environment and a shared vision. Everything is about people, and we regularly review our processes so that they robustly yet simply enable our working together with our clients. Our vision is to be a great law firm for the technology-centric.
How would you characterise the German IP transactions market right now?
Many IP transactions are cross-border, and in particular concern media, communications technology and the Internet of Things (IoT). With the release of government and EU funds, there is heightened investment in cooperative R&D relating to new technologies (eg, in health, AI and quantum technologies). Licensing transactions and M&A activity appear to be at a healthy level, both domestically and internationally.
What common mistakes do businesses make when they first try to start to commercialise their intellectual property – and how can they avoid these?
Commercialising intellectual property is one aspect of the innovation cycle. It begins with the development of a concept or idea, which in turn progresses into a project plan that takes into account the technical challenge and a proposed solution to meet market need and demand. Regardless of the predicted project timeline, both the market and competition need to be tracked as milestones are met and the project plan adjusted where necessary from the technical perspective. Commercialisation of intellectual property is the goal. Considerations for this aspect include (a) ensuring a return on investment (and therefore budgeting for R&D, IP protection and commercialisation); (b) identifying the path to market (determining who will commercialise - the company, a special purpose vehicle, a cooperation partner(s) or a client); and (c) marketing. Fine tuning of the business case should evolve alongside the progress of the technical project(s). It is a multidisciplinary approach that facilitates the innovation cycle.
Protection of the developed intellectual property is also essential. Actively managing this aspect is important. What form should the developed intellectual property be protected as - knowhow, trade secrets, design, copyright or patents, for example? Are there multiple forms of intellectual property to be protected? Is the IP protection to be global and, if so, what are the priority markets for the business strategy? Having strong confidentiality arrangements in place is fundamental.
Given that business leaders are not always conversant in intellectual property, what tips can you share for engaging – and ensuring buy-in from – key stakeholders?
Intellectual property is a valuable asset class that forms part of all businesses – be it in the form of knowhow, trademarks that support brand recognition or intellectual property that is part of products and services. Like any business asset, it needs to be developed, monitored, managed and optimised. My experience and observation over an extended period of time is that any core decision relating to a business’s IP assets should involve a multidisciplinary team, so that all key parameters and perspectives are considered to make an informed decision that is in the best interests of the company. Circumstances will differ as to whether this is a short, medium or long-term objective, and what revenue streams are sought to round out or fit in with a transaction pipeline.
Which emerging technologies are currently having the biggest impact on your clients – and how is this shaping your practice?
Standardised information, communications and technology-related developments, targeted at both developed and developing nations and their needs, are on the rise. The requirement for stronger cooperation across sectors, within and across innovation ecosystems, has come to the fore in order to address global challenges: food and water security, health, the environment, energy and access to education. Raising awareness on what constitutes well-functioning sustainable innovation ecosystems has become increasingly important, from both a government policy and a commercial transaction perspective.
Elisabeth Opie opened a boutique law firm in Munich, Germany, in 2014. With 20 years’ international experience in innovation ecosystems, she advises on technology across various sectors. Ms Opie’s practice areas are international trade, technology transfer and commercialisation, competition law and dispute resolution. Standardised technology is a particular focus. She is registered with the Rechtsanwaltskammer München and practises German, English and Australian law. Ms Opie appeared in the 2020 and 2021 IAM Strategy 300 Global Leaders.