A consultancy project provided by the PROLICE is usually scheduled for a quarter, and its content depends on the type of intellectual property (IP). The individual service packages presented here can be selected and specified in one or two (preferably personal) sessions in which your company’s aims are discussed confidentially. It is recommended that at least one personal meeting with at least two PROLICE consultants be held, for initiating the consulting process, followed by a recommendation for action, especially based on a specific offer resp. based on at least one of the PROLICE’s service packages.
Exemplary questions and consultancy issues
- When do you have to apply for IP rights, and for which kind of IP right and for which territories?
- What is (or could become) a licensable subject matter of a contract with your business partner (now or in the future)?
- Referring to a specific market constellation, should a simple or an exclusive license be granted/used?
- Which license rate may be demanded?
- What scale or dependency should be agreed for the license fee?
- In which constellation or contractual situation is a licensor subject to a claim for repayment of license fees, especially depending on the legal status of the licensed subject matter of the contract?
- How and when can a licensing agreement be terminated?
- Evaluation of the value of a trademark or patent, in particular according to DIN (German Industry Standard), for example in connection with the purchase/sale of parts/assets of a company or legal positions, or for example also in connection with the accounting of “intangible assets”
Exemplary consulting process
An exemplary procedure for PROLICE’s support of your company, especially based oon several project phases, depends on the selected service package, but can generally be structured in three phases (respectively transferable to the above-mentioned service packages):
- 1st Phase
- approx. one to two hours of personal discussion (plus preparation, follow-up and documentation) regarding the current situation of your company, in which you describe your national or international plans to us, defining a kind of specification sheet
- Expenditure: approx. 300 to 500 €.
- 2nd Phase
- Recommendation for action and, if necessary, first basis for a contract for the use of your intellectual property by third parties, or for the use of intellectual property of third parties
- Expenditure: approx. 500 to 1,500 €.
- 3rd Phase
- Ongoing support/consulting of your company in an effective/successful sales and/or licensing constellation over several quarters or even years, if necessary including economic evaluation of IP rights and/or sale of legal positions; if necessary negotiations; if necessary including legal assessment (outsourced service) of the legal status of IP rights; if necessary including contractual changes or extensions, especially in international constellations (e.g. extension of country portfolio, extension of IP rights portfolio).
- Expenditure: approx. 1,500 to 15,000 €.
In the following, in order to be even more clear, three exemplary models of IP exploitation are roughly presented. Please contact the PROLICE if you would like to pursue the exploitation of IP within the framework of one of the following three models for one or more years; the PROLICE will also be happy to provide you with an individual offer regarding specific IP rights involved.
Three predefined models for IP exploitation
Model 1 (cost optimized)
No active exploitation by you or PROLICE, but communication of your property right via PROLICE, in particular on its website in the POOL of licensable property rights, if necessary in connection with a project description (exposé) of your undertakings. The manner of publication can be agreed individually. Alternatively, declarations of readiness to license can also be made.
Model 2 (results-oriented)
Only you or your company remain the holder(s) of your property right; official renewal fees are paid either by yourself or by a cooperation partner. In order to improve the prospects of exploitation, you commission PROLICE for one or more years to actively search for licensees or buyers; PROLICE may also be granted a simple license with the option of sub-licensing, in particular to minimize your own effort in terms of the administration of the property rights.
Model 3 (release of the IP right, without loss of the IP right, but with the option of exploitation)
In case your company has given up any attempt in exploiting your own resp. your company’s IP rights or if you have never considered doing so, there is the possibility of transferring the corresponding IP right to the PROLICE or to any alternative holder of rights, especially by granting a simple license. In this case, the PROLICE will take over the active promotion, marketing and licensing of involved IP rights, especially with the function as the holder of the IP rights, with all rights and obligations. In reverse, you resp. your company may remain a simple licensee. Your company will receive a fair share (at market conditions) of any license income or a sales price; in the event of any disagreements in this respect, the neutral arbitration board of the DPMA (GPTO) may be called upon to determine the standard market conditions.
If you feel yourself resp. your company’s situation fitting with one of these models, we look forward to hearing from you.