Lawyer Monthly Magazine - May 2019 Edition

How can a business turn IP from a revenue drain to gaining money? An IP holder can also explore its licensing opportunities within its own industry. Oftentimes, companies have limited capital and cannot exploit their IP rights to their fullest, even within their own Industries. This gives rise to licensing opportunities, even to competitors in exchange for a royalty. That way, the IP rights holder can maximize its revenue and allow it to not only recoup its investment in the development and protection of the IP rights, but also to generate a profit stream from them. What is your advice on using IP as a litigation vehicle? In some instances, one can use litigation, or the threat of litigation, as a means to obtain licensees and revenue. That approach does not fit every IP asset or every IP asset holder – much will depend on the strength of the IP asset and the infringement case. If the IP asset is both strong and the infringement case is straightforward, one may be able to have a law firm take on the enforcement of the IP rights on contingency, which will allow the IP asset holder to minimize its risk. Also, where the asset is strong and the infringement is clear, even without engaging the services of a contingency law firm, an IP rights holder may have a relatively easy time convincing third-party infringers to take licenses, short of litigation. Litigation is otherwise very expensive and time-consuming for the IP rights holder, so one must closely consider those factors before pursuing litigation. At the same time, if one lets its IP rights be trampled upon without consequence, one would likely be rendering the IP asset worthless. As with any business decision, all the pros and cons must be weighed before deciding on the appropriate strategy. LM Whether or not such licensing opportunities would apply to the IP assets of a particular industry depends much on the nature of the asset. About Mark Mizrahi I am a Partner at the law firm of Freeman Freeman & Smiley, LLP in its Intellectual Property Department. My practice includes all aspects of intellectual property law, from patent and trademark to copyright matters. My ex- pertise includes preparing trademark and copyright ap- plications, preparing and ne- gotiating licenses and agree- ments relating to intellectual property rights, and prepar- ing patent applications. Contact Mark Mizrahi Partner FREEMAN FREEMAN & SMILEY, LLP Phone: 310.255.6129 Fax: 310.255.6229 www.ffslaw.com MAY 2019 37 Expert Insight www. lawyer-monthly .com