Situation: A CEO is reviewing options for introducing a new offering. The target customers are small companies or projects within larger companies. The offering includes both an initial product and follow-on services. Education or training will be a component of the offering. What is the best way to roll out a business opportunity?
Advice from the CEOs:
It is best to position the offering as a straightforward proposition at launch and develop proof of concept. This will provide experience and an income stream to fund more complex offerings based on the initial model.
It will also provide insight on how to sell the product and service in different markets – manufacturing, service, and software.
Leverage this experience to pursue more complex models.
Build a portfolio of case studies before pitching to paying companies.
Use companies with whom relationships already exist as the proving base. These will become references for new clients.
Develop data to show actual cost savings from the use of the product and services.
Establish a relationship with an existing company for which the offering is complimentary and cross-offer products and services on an ad hoc basis.
Trial the product and service with one of their clients in return for a royalty or share of the profit.
Ask that company to make the introduction.
Target start-ups – offer an initial package for a low price. Offer the product to start-ups for free and get them hooked as long-term customers.
What would be needed to roll the offering through growth equity firms or venture capitalists?
This will require some proof that the offering increases the ROI to growth equity and VC portfolio companies and funds.
Note that the portfolio companies of growth equity firms are larger and farther up the growth curve
In current economy the key message to prospects may be that the offering will help them to “right size” their company.
Take a closer look at the offering and determine whether it is configured appropriately for the current environment.
Situation: A company is facing the expiration of the principal patent for its main product. There are subsidiary patents which still have life. Currently, there are no competing products, but several companies understand the technology. How do you plan for patent expiration?
Advice from the CEOs:
Think of this as a two-step process:
Step 1 – Step back and look at what the company has:
Patents – including the claims that have been awarded on all company patents.
Facilities – capable of manufacturing current products, but also additional products, perhaps with a minimum of additional equipment.
People – competent staff running manufacturing operations, and tight office operations.
Step 2 – Loot at where the company could go and evaluate the markets where the existing technology is applicable:
Work with outside, imaginative people who can take a fresh look at the options.
Looks carefully at the claims in all the company’s patents.
What do they cover?
Is there an opportunity to extend current claims through process patents?
Caveat: a company can file for a process patent on anything that has been for sale on the market for less than a year. However, if they have been selling a product covered by this application for more than a year, they cannot.
Look at other markets – companies that could license the company’s technology, or with whom the company could partner to provide new consumer-oriented products:
Is there inexpensive, affordable equipment that would enable the company to produce additional products in the current location?
Think outside the box: what business is the company in? Think more broadly than the current market about where high value opportunities exist. These can be low to medium volume, high price/margin or high-volume lower price/margin.
Patents are not the only protection – trade secrets also work. 3M’s primary IP strategy, particularly on their adhesives, etc. is through trade secret – both for low and high-volume products.
“Product” patent extensions have limited utility. They are easy to design around. “Process” patents have more utility. These can be licensed at low cost per application in high volume applications and provide a nice royalty reserve stream.
A CEO closely watches company cash flow so assure that it is enough to fund the
company during both upswings and downturns. The company is doing well, but the
CEO is concerned about a near-term potential downturn. Where so you find
sources of capital or savings?
from the CEOs:
anticipating future cash flow needs, planning to breakeven may not be enough.
Anticipate contingencies and cut enough to be profitable. This is particularly
true if a downturn is longer than anticipated.
a close look at operating capacity.
current capacity based on staff count and average billing rates.
best – worst case scenarios given market trends. Compare each against current capacity
and evaluate the gaps. This will help set staffing levels to assure that the
company is not overcommitted in case of a downturn.
future cash flow for non-payables based on experience. This may indicate the
need to cut expenses deeper to assure that the company survives an extended
a recovery, pull back those who were let go.
there is underutilized time from the team, pitch this to investors to obtain
equity financing for new IP.
selling a key customer on a royalty model. This can be a small royalty – maybe 1-2%
of products sold based on the company’s contribution. This is pure profit to the company, and provides
an annuity revenue stream, even if small.
at banks which are aggressively expanding in the region. If they are hungry for
new clients they will offer attractive rates.
are better sources of funding than investors. A good client can become a strategic
partner. Do some homework before first before making the call to a key contact.
the level of financing that is needed.
where it would be used and what kind of return the company can yield on the
Situation: The Company is interested in acquiring either the intellectual property (IP) of another company or the company itself. The target is a minor division of a larger parent company. The CEO contacted the parent and confirmed their interest in a deal. What are the key factors to negotiating an IP acquisition?
Advice from the CEOs:
You need to assure your rights to both current IP and future enhancements. This applies whether you or the parent is the final holder of the IP.
Look for clear language as to what constitutes base IP, derivative IP and extensions of the IP. You want to preserve your interest in future derivatives and extensions that you create.
There is a material difference between your position and the parent’s.
If the parent retains the IP, they also gain certain rights to IP extensions based on the current IP. If you own the IP, their potential rights to future IP are lost.
If the parent feels that the IP has strategic value – whether or not they are currently taking advantage of it – this will be one of the more difficult aspects to the negotiation.
What options are there besides acquiring the company?
The parent can grant a fully paid license to the technology, with access to the people and assets, waiving residual rights to future IP extensions, and no restrictions on transfer.
Another option could be a one-time royalty fee that is a perpetual license.
Within your due diligence, try to get a sense of the parent’s motivations and concerns for entertaining your interest in the acquisition. This will help you to frame a deal that works for both parties.
If the parent has been an active licensor or seller of IP, look for lawyers who know the company. Try to secure one of these as counsel for your negotiation.
From a liability standpoint, it is better to buy or license the IP and technology than the company. Liability travels with the company. Part of your negotiation will be who inherits any carry-over liability.