Business Consulting
Business Counseling and Intellectual Property Transactions
ILG’s counseling in the field of Intellectual Property includes providing
significant business consulting services. Typically, innovators are interested
in bringing their new products, systems and process ideas to market. ILG
is neither an invention developer nor a venture capital source. Rather,
recognizing that the process of innovation involves closely intertwined
business and legal considerations, ILG offers its years of real-life business
experience and training in the service of counseling clients in the business
aspects of the process of bringing products to market, including consulting
on a wide range of business development and management issues. A representative
list includes:
- Business plan review, including technology disclosures and overall
business and IP strategy, from start-up to IPO or sale exit;
- Proprietary clearance to market analyses;
- Prototyping and beta testing strategies and agreements;
- Choice and formation of business entities, including partnerships
and sweat equity arrangements, LLCs, S and C corporations, joint arrangements
for product development;
- Dealing with domestic and foreign suppliers and manufacturers, including
non-disclosure agreements, no-cloning strategies, quality control;
- Technology based marketing and roll-out strategies and planning;
- Product packaging and trademark issues;
- Technology exchanges and transfer strategies and execution, including
deal structuring, letters of intent, memorandums of understanding, evaluation
agreements, stand-still arrangements, port-over licensing, derivative
development, acquisitions, sale, licensing and permissions or rights
to manufacture or use, distribution agreements, single use and shrink
wrap licensing strategies;
- Purchase order terms and conditions, including limitation of liability
and protection of client proprietary rights;
- Warranty issues involving technology issues;
- Employer/employee agreements, including terms and strategies for
creation and protection of intellectual property;
- Dealing with investors, including equity proportioning, technology
rights security and escrows and risk shifting techniques and strategies;
- Working closely with and monitoring company consultants and officers;
and
- Advertising and promotions clearances.
Mr. Dulin was CEO of Industrial Resources, Inc. for over 6 years, managing
that company from a start-up funded for under $1MM to a valuation of over
$75MM. He is currently involved in counseling a number of start-ups and
emerging companies all of whom rely heavily on their Intellectual Property
assets as the keystone of their businesses.
In addition, he volunteered time to serve on the Board of Directors of the
Clallam Business Incubator, and was instrumental in the development of its
guided Access Processsm program, an innovative program for mentoring new
and existing businesses in development of new products and markets.
Mr. Dulin’s business counseling work has involved deals valued in excess
of $350MM in the past 7 years. He has handled a broad range of strategic
business counseling, including negotiations and drafting of complex licensing
and rights acquisitions, ranging from stand-alone deals to M & A-embedded
transfers, product development projects, strategic cooperation arrangements
and joint venture deals. Representative examples of his business consulting
work include:
- Deal between equipment contractor and major hard-drive manufacturer
for Product Generation-2 Upgrade, Build Completion Security, and Default
Replication License (part of overall transaction valued at $4MM);
- Due diligence and agreement structure counseling for a semiconductor
equipment company on development of metric software for a major new
product line;
- Post-sale analysis and counseling on scope of residual field of
manufacture for a major electronics manufacturer;
- Deal between an equipment engineering and manufacturing company
and a major semi-conductor wafer equipment company including strategies
for defined-field port-over licenses, involving grant-forward and grant-back
licenses and consulting agreements having earn-out and automatic timed-out
non-compete provisions (transaction value - $12MM);
- Sale of a major division of an electronics manufacturer, responsible
for IP side of deal (transaction value > $100MM);
- Acquisition by a foreign buyer of a US regional brewer involving
copyrights, trademarks, and key-can consulting agreement including rights
of publicity and privacy (transaction value $70MM);
- Consulting on acquisition of U.S. and foreign patent portfolio of
a target company for a major semi-conductor equipment manufacturer (transaction
value > $35MM);
- New product development deal between semiconductor equipment company
and metric equipment manufacturer involving defined field licenses with
fully paid limits, scope of work, joint technical review team and go/no-go
development milestones (transaction valued at > $25MM);
- Counseling on strategy for license to infringer in settlement of
multi-patent enforcement suit and development of industry-wide customer
use license covering infringer’s customers (Royalty value > $35MM);
- Story rights and permissions of individual to national newspaper
and magazine publishers, Network TV interview rights and made for TV
movie rights;
- Technical writer contract with assignment of authorship and inventorship
rights;
- Shale-oil defined field development deal between an industry Institute’s
for-profit subsidiary and major oil company, including license under
Institute patents, sponsored R & E, pilot plant construction and full-scale
commercial operation, with options for exclusive license and industry-wide
licensing program, joint technical review team, R & D mileposts tied
to payments, and back out penalties (transaction value, short term $48MM,
long term > $500MM);
- Technology asset purchase in hard-drive industry (transaction valued
at $16MM);
- Mediated settlement of business dispute over refusal to carry product
in retail food chain;
- Strategic business counseling and evaluation of technology for start-up
licensee in wood-plastic composite products field;
- Evaluation of technology rights position in agricultural waste processing
field; and
- Consultation on donation of plastics and catalyst technology rights
to a major University.
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