IP P®OSPE©TIVE

This is the “have your cake and eat it too” scheme.

Companies often believe that core intellectual property only holds value in the competitive advantage it creates through its operational use. Although this may be true in some cases, a core IP sale and license-back model may be advantageous in other situations. If a company’s IP is critical to its operations, but it needs cash to operate, it may sell its IP to another company in a transaction that allows the selling company to license back the IP for its continued use. This model can be efficient and advantageous for both parties, but the selling company should carefully choose the buyer. In most cases, the license back will not be exclusive. Therefore, the buyer will have the option of licensing the IP to other companies, including the selling company’s competitors. In a case where the IP creates a strong competitive advantage for the selling company, the sale and license back model is not advised unless the buyer agrees to limitations in its own outbound licensing.

Another necessary caution in the sale and license back model for the selling company is transferability of the inbound license. The company will want to consider its own exit strategy. If it desires to sell the company at a later stage, the company will want to make sure that the inbound license is transferable with a sale of the business. If not, then potential purchasers will find no value in a company that can only be sold without its core IP. That is like buying a cell phone without the only battery that turns it on.

Finally, a last concern for a selling corporation is making sure that the core IP it sells is not “all or substantially all” of its assets. Under most state statutes, this language defines the line between a sale of one asset and an asset sale requiring shareholder approval. When “all or substantially all” of a corporation’s assets are sold, shareholders’ voting rights and dissenters’ appraisal rights are frequently triggered. Therefore, to avoid a chaos of legal issues, careful consideration of this component is necessary.