You are well-known for your expertise negotiating and closing complex IP transactions – what, for you, defines a successful deal?
Success, of course, means meeting the client’s immediate commercial objectives. It also means preserving their long-term IP position and commercial relationships with the counterparty.
Often, an IP transaction is just one part of a much broader commercial relationship, perhaps including a supply contract or an ongoing technical collaboration. Any agreement forms part of that relationship and needs to be sufficiently clear and practical to foster a productive relationship without compromising IP ownership or opening either side up to unacceptable risk.
What has been your most memorable case or matter to date – and why?
My most memorable project was working with an SME client to help them build a patent portfolio from scratch and then close a lucrative deal with a large multinational firm.
We had a complicated starting position for negotiation, as when we began to advise, commercial negotiation and technical collaboration had already commenced. No heads of terms had been agreed, and some confidentiality obligations complications were present. Both sides had made significant investments and everyone wanted the deal to move forward, but frankly the IP position was incredibly unclear and the two sides had vastly different commercial objectives. We wanted the supply contract and full ownership of the intellectual property, while the other side wanted the contract manufacture by a third party and to pay us a small royalty instead.
On our side, we needed to balance the commercial relationship and pressure to close the deal against the need to preserve the IP position and to try to hold out for the supply contract. We could also see that the other side faced a risk because although they held the source code for the product, we had rights to confidential information in that code. At that point, the contractual and commercial history of the deal meant that the ownership of some of our key patents could have been questioned.
We were able to successfully leverage the importance of confidential information and arrived at an agreement which clarified ownership of the patent and gave us the supply contract we wanted.
As patent pools become a more established part of the commercial landscape, what trends do you think will shape how they develop next?
Particularly in the automotive industry, many disputes are related to the licensing of telecoms patent pools. It will be interesting to see how the impact of said conflicts pans out. I do not think it is clear yet how they will shape the commercial landscape or how wide that effect will spread.
What tips can you share for engaging – and ensuring buy-in from – key stakeholders?
Getting buy-in means making things relevant. If not properly handled, IP matters seem abstract. They are not – they are tied directly to a practical commercial reality. You need to understand that link before you can offer real advice on bringing the intellectual property to bear help to a business.
Which emerging technologies are currently having the biggest impact on your clients – and how is this shaping your practice?
AI and machine learning technologies are having an increasingly wide reach. We see their impact in technologies as far separated as welding masks and drug discovery. We are finding more that multi-disciplinary teams are necessary to handle cases which bring together disparate areas of technology.
Sean Leach works in Mathys & Squire’s IT and engineering team, specialising in electronics, medical devices, network communications and software. His work includes drafting and prosecuting patent applications, as well as advising on IP strategy and agreements for clients including multinational corporations and start-ups. Mr Leach has exceptional expertise in dealing with the exclusions from patentability of computer programs, mathematical methods, methods of diagnosis, and methods of treatment by surgery and therapy.