Mapping the way

Mapping the way

Providing technology commercialisation and negotiation advice and preparing pitching documents for a patent pending air conditioning invention.

Entrepreneurs see advantage where others don't. They seize advantage by aligning people and resources to their vision. The bolder the vision, the greater the need for commercialisation strategy, business process, financial modelling and contracts.

Here's a case study of one such entrepreneur for whom we've conducted a decade of commercialisation modelling.

In 2003 a tall and lanky engineer came with his rucksack to the Dilanchian office for a meeting.

One of Australia's largest mining and steel production companies had paid him for his consulting time for a hydrogen diffusion system in steel production. It insisted on not paying for his intellectual property ("IP") created in inventing technical designs and solutions.

For many long hours we listened to the history of development of his technical solution. We did this to identify the engineer's legal position and IP. The conversation carried over to the next day when we reviewed his technical drawings. Our advice was that the chance of victory in court was too low. There was a disparity in the financial means of the parties. Moreover, our client had invented a solution but had lacked the writing and negotiation skills to precisely define, document and protect his IP.

Our client was unhappy with the advice to not sue. He objected, felt robbed, but ultimately accepted the logic of the advice. He said he comes up with stuff, and might be back one day.

To avoid similar intellectual property leakage in future we prepared a customised consultancy letter agreement for our engineer client.

In 2004 our client returned with his rucksack. It was full of notes and graphs for a soot blowing technology concept for a coal-fired electricity generating plant in Australia. The technology promised many benefits. Consulting work had given him a hunch.

What he wanted from us was business engineering, specifically commercialisation advice and documents. This included IP licences and assignments, various types of additional contracts, and business structuring advice.

Seven years on… our client had a system that was designed, installed, tested and operational at a plant in South Australia. The invention was part hardware, part software, part know-how. It was patented and fully documented, making protection feasible under patent, copyright, confidential information, contract and company law. Our client was positioned to go to the next level.

To lock in competitive advantage, our firm has paved our client's technology system's commercialisation path with over 20 contracts. There's contracts with power companies, licensees, programmers, hardware installers, and consulting engineers. They reduce the risk of disputes and help achieve targeted outcomes by documenting deals and referencing the system's IP and technical information..

Progress has required a multi-disciplinary team even in our firm. In 2005 a young lawyer, Daniel Dwyer, profiled the technology in four tight pages of writing. He has degrees in law and IT and before he joined our firm he worked at the Australian Nuclear Science and Technology Organisation. In 2010 Michael Ney, our digital media services consultant, sat for weeks with our client in our office documenting the evolved fuller system for both contract preparation and a forthcoming second patent. Noric Dilanchian has worked throughout on venture structuring, licence fees, contracts, dispute resolution and preparing licensing proposals and agreements..

Lawyers are usually called in like the fire brigade - after a fire has already started. It can be far more beneficial to bring lawyer in to work like engineers, to develop a commercialisation path and design fire proof structures.

Noric Dilanchian BA, LLB

Managing Partner

Lawyer for Intellectual Property, Technology & Business + Commercialisation Specialist.

Rosana She LLB, BA (Media & Communications)

Lawyer

Lawyer for Intellectual Property and Business Law. Speaks and writes Cantonese and Mandarin fluently.