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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