Our client was one of the leading drug delivery companies in the world specialising in particular in syringes with a substantial share of the worldwide market for the sale of syringes. It sold these as products. Although it had an extensive R&D and Patents department and had newly developed ground-breaking technology for “needleless injection”’ it had rarely, if ever, licensed out its technology.
Rather than selling needleless injectors, it appreciated that if it could license its technology to drug companies who would pre-fill the needleless injectors with the drugs they were selling, our client’s royalty on the sales could be substantial – and substantially greater than the profit it could make merely by selling the injector devices, as it would take a royalty based on the value of the pre-filled injector.
The issues it faced were: could exclusivity be given and if so how could it go about structuring licence deals to maximise its revenue for this activity? Was it even possible to structure a licensing deal that was compliant with Europe-wide competition and licensing rules.
The drug companies wanted exclusivity – and we advised that is was possible to give exclusivity for specific (and defined) therapeutic applications. The concern, obviously, was to ensure that exclusivity was not given more than once and that there was no “overlap” between the therapeutic uses granted to one drug company over another. The risk of getting that wrong was that our client would be in breach of its exclusivity. By finding mechanisms of defining different and non-overlapping therapeutic applications, we were able to ensure that exclusivity could be given to each drug company without contravening exclusivity given to other drug companies.
A standard IP licence precedent was produced which gave effect to our strategy and given the uncertainties of European competition and technology licensing law at the time, this was reviewed at our suggestion, on an informal basis, by the EU who were extremely comfortable with the strategy we had devised, as well as with its implementation, as demonstrated by the draft licensing agreement we had produced.
Our client was able to go to the leading world-wide drug companies offering to license its technology, on the basis of the precedent we had produced, and although that precedent was then negotiated separately with each drug company, the methodology remained the same. Our client was accordingly able to move from being a product supply company to an IP licensing company, at least as regards this particular technology.