Technology is often discovered or developed by scientists, inventors and companies that have no efficient means themselves of exploiting the technology across international markets.
The value of the technology can perhaps better be exploited by companies with marketing credibility and strength, by companies in other market sectors or other countries. Identifying, engaging with, structuring and negotiating one or more suitable deals with such companies requires both vision and skills.
The final deal at the conclusion of a negotiation may be surprisingly more advantageous than the outcome expected at the start. A simple licence deal may turn into a joint venture, an acquisition or an exchange of technology. Our objective is to assist our clients to arrive at agreements that are both advantageous and enduring.
Few scientists and inventors have deep experience of licensing their discoveries and inventions. And licensing is rarely a core corporate function, even in large firms. So licences are often agreed that are far from optimal, indeed for either side, sometimes leading to missed profits and opportunities, and a souring of the relationships vital to the success of the deal.
We can assist clients negotiate licences, advise them on potential deal structures, the elements to be included or excluded, royalty rates, and termination arrangements.
With this technical and commercial support our objective is that the client should arrive at an agreement, or set of agreements, that optimise the benefit, within a workable, durable and constructive relationship with the other party.
Unfortunately, sometimes licence deals break down. The parties find themselves in dispute. Litigation is long and expensive, to be avoided if other means to resolve the disagreements can be found. If both parties are willing to try mediation, disputes can often be resolved in hours or days, rather than the months and years required for litigation.
The mediation process is normally relatively informal and non-binding. Mediation requires a measure of good will between the parties in dispute, and for the mediator to have sensitivity, a deep understanding of licensing, and the determination to understand the key elements of the businesses’ licensing perspectives.
John Emanuel acts as mediator for parties in dispute over licensing issues. His objective is to either dis-entangle the disputing parties or to help re-structure the agreements between them into mutually beneficial new arrangements.
In patent litigation, if a patent is found to be valid and infringed, the infringer will be required to pay the patent owner damages. An important part of the damages will usually be calculated from the hypothetical royalties that the infringer would have paid, had a licence been agreed at the time the infringement started.
John Emanuel has acted as an expert witness on royalties in some eighteen patent litigation cases in the UK and North America. With his many expert reports and appearances on the witness stand, together with his extensive experience in non-contentious licensing as expert witness, he brings exceptional expertise and objectivity to the contentious issues of royalty rates and royalties due.
In some cases, knowledge and acceptance of royalties likely to be awarded by the courts, can enable the parties to settle and avoid the further litigation delay and costs.
John Emanuel’s objective is to bring clarity to the client on the issue of royalties, so the client and its legal representatives can make informed decisions when considering litigation strategy and/or settlement out of court.