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Who can help you to commercialize your IPRs?

As mentioned before, your commercialisation plans should follow a logical order:

  • The first step consists of carrying out an IP Audit and an IP Valuation.
  • Then, you should ensure your IPRs are duly protected (at home and abroad).
  • The following step is to enter in the right type of contract that will help you better commercialize your IPRs.
  • Finally, you need to enforce your IPRs.

The bad news is that the DYI (Do It Yourself) approach may not work for you in this case, and for most of the above tasks, you may need to rely on the technical and strategic support of the right expert. The second bad news is that you may need to hire different types of experts depending on the step at which you are. Please don’t get discouraged.

For example, while you might be able at a stretch to carry out your own IP Audit, it is unlikely that you may be capable of assessing the value of your IPRs (or of those of your counterpart). Particularly, the first times that you undertake these two important steps toward the commercialisation of your IPRs, you may want to involve an IP expert, who has proven experience in these types of activities.

For the second step, the situation is relatively easier: most of countries provide for lists of accredited IP Agents (or Representatives) that can act on behalf of clients and file your IPRs at national level. If that is the case, contact a few of them to try to assess the quality of their services, their past experience and, of course, their fees. If you are interested in exporting to other countries, then you have to protect your IPRs in those countries. Make sure that the IP Agent you choose in your country:

  • Has experience in using WIPO international registration systems (i.e.: the Madrid, The Hague and the PCT systems), and
  • Possesses a good network of IP associates in the countries where you want to obtain protection, in case you may need to react to possible refusals or official actions by their domestic IP offices.

Finding the right professional to help you with the third step of IP commercialisation is probably the most challenging. We already mentioned that the IP commercialisation contracts (i.e. licensing, technology transfers, franchising, etc.) are EXTREMELY complex. Do not attempt to draft them yourself. In addition, a normal/traditional lawyer may not possess the right experience to draft such contracts. You will have to search for somebody who has profound experience in:

  • Commercial and business law
  • Contract law
  • IP law and practice
  • And possibly proven prior experience in drafting similar types of contracts

… Good luck!

The situation is again quite straightforward for the last step. Enforcement of IPRs can only be carried out by lawyers. Also, in this case, you may not look for a general lawyer (and perhaps not even a business lawyer), but an experienced IP lawyer with proven track record in IP litigation.

As already mentioned, before selecting a particular professional to help you out in a particular step of your commercialisation plan, make sure that he/she has a very large network of associates that will be able to assist you, for example, in:

  • Securing protection of your IPRs to their countries, by responding to refusals or requests for modifications by their respective IP offices;
  • Drafting the right commercialisation contract, or adapting your existing contracts to the specificities of their countries (including to comply with their domestic legal requirements);
  • Enforcing your IPRs in their countries.

Please see list in Section III. 2.


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