Stratagem IPM Services

Intellectual Property Strategy and Commercial Advice

Patents, trade marks, designs, copyright, trade secrets and other intellectual property rights are key commercial assets. Stratagem’s comprehensive strategic management service creates an integrated commercial approach to the creation, maintenance, and enforcement of an intellectual property portfolio estate. This is achieved through specialist hands-on advice and management. The service also includes a full assessment and management of the freedom to commercialise the technology, product or services and competitive intelligence. Value creation and return on investment are key elements of the Stratagem approach. The result is a cost effective, value-added, intellectual property portfolio achieved by integrating a well developed strategy into the full business planning process, and a clear understanding of and path to, the market.

Intellectual Property Portfolio Management

Outsourcing the intellectual property function to Stratagem provides clients with the benefit of the equivalent of a full industrial intellectual property department at their service for just the amount they need, as and when they need it. The service includes the running of regular in-house intellectual property meetings to facilitate decision making, co-ordinating all in-house client procedures and formalities, collating data and information for the setting of the intellectual property strategy, implementing the strategy, budgeting, due diligence etc. Allowing Stratagem to become the in-house team leaves the client to focus time and resource on the other core business functions.

Intellectual Property Mechanics of Drafting, Filing, Prosecution, Defence etc.

As qualified European and UK Patent Attorneys, Stratagem can provide a "one-stop-shop" so in addition to managing the portfolio commercially and strategically, Stratagem can also draft, file, prosecute and defend registered rights such as patents, trade marks and designs, on a global basis, in conjunction with its extensive network of foreign agents.

Intellectual Property Licensing, Acquistion and Disposal

A key service offered by Stratagem is the provision of expert licensing advice and implementation. This involves working with the client to deliver a comprehensive licensing strategy for product, platform technology and service development. Stratagem’s experts have undertaken many high-level, high-value negotiations resulting in multimillion pound arrangements, as well as much smaller deals as the client needs dictate. Stratagem’s licensing clients have included small academic spin-outs to main-listed multinational companies covering complex technologies such as genomic/proteomic screening platforms to electrical, mechanical medical and safety devices and single chemical and biological entities. The Stratagem team has significant experience of setting licensing and acquisition/disposal strategies, advising on commercial intellectual property and legal contract terms, and competition law, and drafting and settling term sheets and agreements, as well as leading negotiations with multinationals and mid/small technology based companies in various billion dollar markets.

Freedom to Operate and Validity Opinion Work

A comprehensive intellectual property position is a detailed, multifaceted product requiring full analysis of freedom to operate and commercialisation of a product, technology or service, leading if required, to an assessment of the validity of any possible impediments. The Stratagem approach provides a review of options at each stage to manage budget, company needs, investor expectation and realistic reduction in risk at each stage of the development and marketing cycle. Stratagem do not stop by presenting a string of options, leaving the client to decide, but actively work with the client and if required, implement the decision which may involve licensing or acquisition – see above.

Due Diligence Reviews and Advice

A key part of value creation in an intellectual property portfolio is an ongoing process of detailed review and analysis of the patent estate and freedom to operate. This can fulfil a variety of functions by delivering a report for an investor pre-financing, as part of M&A, MBO, acquisition or divestment. The benefit of a commercially designed intellectual property plan created as early as possible in the life of a business means that the building blocks are available to meet any eventuality or opportunity without the need to spend money reacting as opportunities arise. From the aspect of investors this versatile due diligence activity is invaluable to potential investors of all sizes, law firms and companies evaluating acquisition targets.

Dispute Resolution

Increasingly the courts are directing intellectual property and other corporate disagreements to be settled by dispute resolution such as mediation. This process brings many benefits including speed of resolution, reduction in costs and reinstatement of good working relationships. Stratagem can provide services including resolution of industrial and corporate disputes including intellectual property disputes such as inventorship, ownership and exploitation of rights. The Stratagem staff who undertake these assignments are Accredited Mediators following the International Dispute Resolution Centre (CEDR) guidelines.

Business Development

Clients at all stages of evolution can benefit from external business development services. The Stratagem speciality includes identification of suitable partners for in and out-licensing, acquisition and/or disposal of intellectual property rights and technology packages. Stratagem can operate as part of the client team or as an independent third party whichever best suits the client and situation. The Stratagem service can be very effective to either dispose of non-core assets or obtain an expanded pipeline of technologies to augment product offering, research and development activities or product range expansion in particular.

Deal Creation, Negotiation and Closure

The strong commercial experience of our intellectual property staff is a proven valuable resource for any company needing to create a plan, identify targets, undertake negotiations and finalise deal structure. Clients often require to capitalise on a deal opportunity to build their business from product acquisition, locate licensable product or divest of assets at any stage of their development. Often the plan needs defining or resources need assigning at times when resources are unavailable, fully occupied or skills need augmenting. Stratagem can undertake any aspect of these projects particularly if anonymity is essential at any stage. We work closely with clients to devise a plan and participate as part of your team in any role from total implementation to specific item work.

Intellectual Property Training

Stratagem has developed a number of training programmes aimed specifically at non-intellectual property professionals who are managing intellectual property or are affected by intellectual property within a corporate or research environment. The training will benefit anyone who needs a working understanding of intellectual property and allows them to comprehend what is asked of them by their own intellectual property advisors. A major benefit derived by taking one of the Stratagem courses is the ability to assist or probe effectively during any due diligence activity. The courses are cost effective and delivered by fully trained intellectual property professionals with extensive commercial experience.

Intellectual Property Corporate Governance and Risk Management

Often under-valued or over-looked this function is important to any company with an intellectual property portfolio. The Stratagem staff undertake a professional and detailed audit of all in-house intellectual property processes. The process includes an evaluation of how new inventions are identified and managed, how the portfolio is managed, lab notebook maintenance procedure, inventorship, ownership, document management, database management etc. The deliverable is a comprehensive report detailing recommendations for improvement or change.

Intellectual Property Transfer Recordal

Intellectual property transfer recordal is necessary for an assignee or licensee to be able to effect its rights. The process includes evaluation of documentation relating to assignment or licences of patent, design and trade mark rights and/or creation of the same. The Stratagem experts are skilled at obtaining notarised and/or legalised copies of documents as required from National embassies on time, complete and accurate. Stratagem then take the responsibility of instructing and interacting with local agents to ensure recordal at each and every National Patent office and/or Registry saving clients both time and money.

Portfolio Forecasting

One of Stratagem’s unique and much used services is portfolio forecasting. The set of tools used were developed specifically by Stratagem to meet the need for companies to understand their possible annual intellectual property expenditure. The system delivers cost effective annual projections on a Quarter by Quarter basis for budget year costs of filing, prosecution, and maintenance of all patents, designs and trade marks contained in the portfolio, based on global official costs and estimates of local attorney charges. Stratagem then also provides estimates for freedom to operate search and analysis costs, management fees, licensing, due diligence and any other projected activities.

Technical and Patent Searching

The Stratagem technical and patent searching services covers patentability and freedom to operate/infringement searches. Stratagem undertake extensive patent owner/assignee/inventor name, chemical structure/keyword/IPC classification searching together with competitor activity/company searches. Stratagem’s experienced staff can undertake expert market analysis and technical assessments. Stratagem can provide clients with copies of patents and patent applications, file wrappers/ histories, copies of trade marks and designs plus can deliver patent and trade mark watches and reports to meet specific requirements.

Intellectual Property Landscaping

A good understanding of the competitive position of a company from an intellectual property point of view, is an invaluable tool in informing business strategy and implementation, and can complement a full commercial analysis. Using in-house searching facilities, Stratagem can collate and analyse the patent landscape and identify organisations working in the client fields and adjacent or linked technologies.

Document Management

This recently extended service from Stratagem brings clients a fully comprehensive, reliable and responsive facility. The backbone of the system is an OCR full text scanning and coding capability for all hard copy, coupled with filing and coding of all electronic documentation associated with the intellectual property process. This allows rapid and reliable retrieval on a case by case subject-matter basis and includes suitable coding for the identification of documentation required in any due diligence. The information is supplied in electronic searchable on-line format ensuring secure access on a client-by-client basis. The final result is a CD/DVD format of all documents with searchable indexing for the purposes of due diligence to meet the most stringent and urgent requirements.

Database Management

Many clients require the creation and maintenance of a database of their valuable intellectual property details relating to patents, trade marks, design filings and domain names etc. In addition the system can rapidly and regularly deliver management reporting, due diligence data sets and diaries for all activities including management, forward date projections and budgeting.

Professional Agency Work

More vitally important functions provided by the Stratagem team create and maintain intellectual property assets including drafting and filing patents, design and trade mark applications on a global basis and carrying out pre-filing and post filing search and analysis to check for patentability and registrability. This extends into more complex areas of carrying out prosecution, grant and post grant procedures, handling opposition and other third party proceedings. As a full service company with widely experienced and qualified staff at all levels Stratagem represents a one-stop choice for all intellectual property needs.