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Georgina Wilkins is Head of IP Strategy at Hitachi Energy. Over a number of years she has been involved in due diligence around IP before investing in or acquiring a tech business.
Georgina tells us how to build your IP portfolio and present it in due diligence to maximise your valuation.
Do you understand what your investor/acquirer wants?Do you know what IP you have?Do you know its value?Does you IP align with the value in your business?What if you’ve done nothing with your IP?Is IP respected in your business in contracts with suppliers, customers, collaborators and employees?Do you manage unregistered IP?Have you understood and managed IP risks, in particular freedom to operate? This is probably a bigger risk for the acquirer than it is to you.The views Georgina expresses in the show are her own and do not necessarily reflect those of her employer, Hitachi Energy.
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Kelvin King is an IP valuation expert of some experience. He has been valuing intangible assets for around 40 years and is one of the foremost experts in the world.
In this episode of Where's the Exit, I ask Kelvin about
What is IP valuation?Why should SMEs be bothered with it?How do we go about valuing IP?Does the valuation depend on who it’s for?If you want to talk more about any of the points raised in the podcast then you can contact me via LinkedIn and I'll put you in touch with Kelvin, or you can contact him directly through LinkedIn or the website for his business, Valuation Consulting.
The list of intangible assets mentioned by Kelvin and identified by the US Financial Standards Accounting Board is copied below
Marketing-related:
Trademarks
Trade names
Service marks
Trade dress
Newspaper mastheads
Internet domain names
Artistic-related:
Plays
Operas
Ballets
Books
Articles
Other literary works
Musical works
Pictures
Photographs
Video
Audiovisual material
Contract-based:
Licensing agreements
Advertising or service contracts
Lease agreements
Construction permits
Operating and broadcast rights
Employment contracts
Technology-based:
Patented technology
Computer software
Unpatented technology
Databases
Trade secrets
Secret formulae
Customer-related:
Customer lists
Customer contracts
Customer relationships
Customer agreements
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Diversity, Equity & Inclusion (DEI) is one of the biggest challenges currently facing the legal sector in Europe and the USA. Many partnerships are dominated by white males, are not reflective of the diversity that we see in the world around us and they can also create cultures where it's harder for non-dominant groups to get ahead. The legal sector has struggled with this more than most and has been sluggish to see real change. IP firms are no exception.
In this episode of Where's the Exit, I speak to Meredith Struby, Managing Partner of Meunier, Carlin & Curfman LLC, an Intellectual Property firm in Atlanta, Georgia. Meredith has been working with her team to create a new type of law firm where everyone can feel free to speak out and feel psychologically safe at work.
What is DEI?What are the benefits to firms of working on this?Why should clients care that the firms they're using are more diverse, equitable and inclusive?Why it's important to talk about this even if it's hard and scary?How can law firms start to get better at DEI?Whose responsibility is DEI?What have Meredith and her team been doing to implement this at their firm and what benefits have they seen?You can hear more from Meredith and reach out to her on LinkedIn or through her firm.
Otherwise feel free to contact me and I'll connect you. -
Donal, one of the world's foremost experts on trade secrets, takes us through practical tips on how tech companies can unearth and manage their trade secrets effectively to generate value for their businesses.
Donal takes us through
What are trade secrets?Business information that is secret, has commercial value and that you've made reasonable efforts to keep secretWhere will you find them in your business?Why should tech leaders bother with trade secrets? What's the risk if you don't manage them?Managing trade secrets is a journey and a change projectBut there are key steps to takeGive basic trade secrets education to your staff, starting with the leadershipGenerate a trade secret policy setting out how you want to handle themHave a process to identify, assess the value of and protect your trade secretsDocument and catalogue your trade secretsMake sure its someone's responsibility within your businessA great episode that really helps businesses understand the path to getting their trade secrets under control and generating maximum value from them.
If you want to chat about any of these issues more then contact me on LinkedIn, or you can reach Donal on LinkedIn. You can also check out Donal's business Chawton IP Solutions http://www.chawtoninnovationservices.co.uk/
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Alan has worked as in-house Intellectual Property and Patent Counsel for a number of different businesses, both large multinationals and UK start-ups. He is currently in-house IP Counsel with a large UK e-commerce business. He's also worked in different firms of Patent Attorneys both large and small. That breadth of experience gives a unique perspective on the role of IP Counsel and external IP providers and what it makes sense to do with your IP as a tech start-up.
Topics discussed include
The difference between having someone in-house compared to having an external advisorHow to get an in-house experience from your external advisorsWhat are the things that tech start-ups should do really early on with their IP?What actually is an IP strategy? What does that term really mean?How often should you update your IP strategy?When getting support for that, choose an attorney who enjoys understanding business and business strategyWhat should tech start-ups do around IP risk?How to streamline freedom to operate work to make sure you’re not infringing someone else’s IPYou can reach Alan through his LinkedIn profile https://www.linkedin.com/in/alan-chapman-57615630/
If you'd like to chat about getting in-house IP support for your business then get in touch with me [email protected]
I can also put you in touch with Alan if you'd like to chat with him more.
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If you're an IP rich business and looking to secure investment then this episode is loaded with value for you. Sandy is an investor with a lot of experience and was also the other side of the deal when she founded and scaled her own IP rich business from a university spin-out - a business that is still going strong today.
Among other things, we cover:
How to access Mercia, whether through their website applications process or getting live feedback over the phone through the hugely popular 'Meet the Funder' programWhat VCs are looking for in terms of IPHow important IP is in different sectorsHow important are intangible assets in software businesses?How clued up are investors when it comes to IP?Should you do some freedom to operate work in preparation for investment?The importance of making sure your patents actually cover your productsThe relationship between universities, founders and VCs and how it can go wrongHow getting your IP in good shape has a big impact on your credibility with VCsA must listen if you're looking to gain investment.
Sandy can be reached through LinkedIn and you can access Mercia through their website.
If you'd like support on getting your IP ready for investment then get in touch with me by email.
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In this episode I discuss the landscape of UK government funded advice and support for tech SMEs with Jane Galsworthy. It's a complicated world but Jane has been around it for a long time and understands it better than anyone. She has designed support programs for business and helped shape national policy - always providing insightful comment on LinkedIn.
We talk about what good should look like for government support and identify 3 key areas
Good business and strategic planningHelp with innovating and bringing ideas to marketAccess to financeWe talk through each of these and set out how businesses can access the support as startups and scale-ups.
If you have any questions or would like to get in touch with Jane then her Linkedin profile is below, along with the URL for Oxford Innovation Advice.
https://oxfordinnovationadvice.co.uk/
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Matt Sammon has a heap of experience advising all sorts of clients about effective protection and enforcement of their trademarks. In this episode of "Where's the exit?" Matt takes us through everything that a tech business needs to consider from before launch, right up to a more mature trademark strategy that prepares your business for exit. What does it make sense to do and what can you safely leave till later.
Main points
Trademarks are as much about making sure you can use your brands as it is about stopping othersGet advice early, while you're naming your business to make sure that the name is free to useRegister your company name at least and then discuss what you need for the next few years - it's probably not a lotYou might well be able to delay filing in other countriesAs you grow, stay in touch with your trademark attorney to make sure you still have the right approach as the business changesWatch what others are filing in other countriesYou can learn more about Matt on his LinkedIn profile and the webiste of his business, Sonder & Clay - both links below
https://www.linkedin.com/in/mattsammon/?originalSubdomain=uk
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R&D Tax Credits is one of those things that a lot of businesses think they have sorted, but they actually don't. And Patent Box seems never to have taken off and provided the benefits it was supposed to for all but a few businesses.
As a tech SME you need to get proper advice to submit the most effective claims in both of these areas, but there are some things that you need to know as the leader of the business so that you make sure you're managing things well. Angela takes us through that.
For R&D Tax Credits the view of HMRC is evolving all the time and businesses need to keep on top of the situation
What is R&D and are you actually doing it?What should a new start-up do to put themselves in the best position to make their first claims?Grant funding will mean you can't make an R&D Tax Credit claim?Will my client contracts mean I can't make a claim?R&D calcs need to be reviewed periodically to make sure you're adapting to HMRC evolutionPatent Box is much more of a 'minority sport'
You need to be profitable to claim itHow will my company structure affect my claim?It works for a few, but it's not broadly applicable -
Professor David Park is Professor of Entrepreneurship & Innovation within the University of Nottingham's Business School where he lectures and mentors in entrepreneurship, IP commercialisation and innovation. He has first-hand experience raising start-up funds, growing effective, multi-disciplinary teams, and completing £multi-million licensing deals with a FTSE100 plc.
In this episode of "Where's the exit?" David talks to Stephen about what he's learned during his time starting and running his own businesses, his experiences of raising capital based on an IP position and how he went about securing a licensing deal based on patents.
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Whether it's trade secrets, patents, NDAs, trademarks, designs, agreements, know-how, data or anything else, intangible assets and the IP that they give rise to are very broad and cover all departments of your business. Getting a handle on all these different assets and managing them centrally cannot be done without some sort of register.
Donal O'Connell was previously VP of IPR at Nokia and now runs his own IP firm that provides one such register specifically aimed at the SME market. In this episode, Donal discusses the breadth of intangible assets and why your business needs to log them so that they can be managed effectively and risks to your business can be offset. As Donal says, "you can't do this on the back of a cigarette packet."
Among other things, we talk through
What is an intangible asset?What risks are you exposed to if you don't manage intangible assets properly?What are the benefits of managing intangible assets properly?Why using specifically designed software trumps using a spreadsheetWhat to do to get started -
Will Chelton has been an in-house IP attorney for over a decade, working in large tech businesses that are household names and that How to manage IP in yopur tech business: the basicsfile thousands of patents. More recently he was Chief Legal Officer at a large blockchain business in central London. We get Will's perspective on some of the things tech businesses can do themselves to get a better handle on their IP and manage it effectively.
