Case Study:
Smart IP Agreement for Exploiting an Invention

Problem & Action Needed

Our client is a biotech company that made a major invention in the field of food additives. The company was in need of legal advice to draft cooperation agreements for developing the product to a marketable stage and to set up a world-wide manufacturing and distribution network.

HOFFMANN EITLE’s Team

HE has many years of experience in drafting and negotiating license, R&D and distribution agreements, especially in the field of life sciences and the chemical, pharmaceutical and food industries. A team was formed of an attorney-at-law from our dedicated patent litigation and licensing group who is experienced in drafting and negotiating IP contracts and a patent attorney specialized in the biotech field.

Outcome

A strategy was developed together with the client to realize the maximum value of the client’s invention. After the strategy was set up and the patent applications ensuring solid and commercially viable protection for the client’s invention were filed, a number of companies were contacted in parallel negotiations, to secure exclusive marketing licenses for different possible applications of the product. With this ‘exclusivity split’, agreements were concluded with partners having great potential in each field, instead of just giving it to one marketing partner. Each deal had clear commercial goals and exit scenarios to enable alternative marketing scenarios in case of a project failure. Manufacturing and development agreements were negotiated and concluded in parallel.