The main reason for the under-performance of it’s licensee was that it was under-resourced for developing the technology to the state necessary for proper exploitation. When we looked at the chemistry and oil technology involved, we could see that there were in fact many possible applications in the oil industry, all of which required development. Our advice was that its IP should be licensed separately to different licensees for a large number of fields of use. This would ensure each use received the proper development that it needed within a reasonable time, and also that the royalty income would be maximised.

We succeeded in identifying several fields of use, even within the oil industry. However, our client could not put in place such a system of licenses for the oil industry because of its existing exclusive licence, which was due to run for the duration of the patents. We analysed the terms of the licence, and were able to advise that they were not compliant with the technology transfer block exemption, and were therefore unenforceable. In consequence, it was able to terminate its unsatisfactory licence at little cost, and start talking to a number of companies in the oil industry which had the resources and will to devote to developing and exploiting specific fields of use within that industry.

The added benefit was that, because we had already identified potential uses, our client was able to initiate specific research, and the new licensees were immediately interested in funding collaborative R&D programmes in those fields. With the income, including funding for collaborative R&D, now coming in from licensees in the oil industry, its resources were freed up to pursue developments in the pharmaceuticals and other fields.