The Company was established in 2001 and specialized in developing and manufacturing high-performance medical devices targeting anesthesia and critical care. The Company was committed to innovation, and as part of its R&D, was developing a device to measure the depth of consciousness of a patient during general anesthesia; the technology was intended to increase patient safety, reduce medical malpractice claims associated with over-dosing, and reduce the recovery time of patients.
Metis Partners was engaged to identify and assess the critical IP assets that related specifically to the ‘consciousness monitoring device’ as the Company wanted to separate this new business stream and its associated risk, from the existing profitable device business. The ‘NewCo’ would take responsibility for further R&D and product development, and ongoing warranty and support requirements of the new device.
Our scope extended to identifying risks and vulnerabilities of the IP that was being transferred and provide recommendations on actions NewCo should take to mitigate risks and strengthen its IP position, particularly since IP had previously leaked out of the business and been subject to dispute.
This innovative Company had a wealth of IP including patents, potential trade secrets, key organizational knowledge and know-how, however a number of these assets were both vulnerable and likely to be shared by the Company and the NewCo.
We identified that the new device was underpinned by a base algorithm, which was critical to securing competitive advantage and so should be treated as a trade secret. A number of additional potential trade secrets were also discovered which warranted a dedicated trade secrets policy be implemented. This would mitigate the risk of this critical IP leaking out of the business, particularly with an imminent IP transfer.
We identified extensive technical know-how which was held by individual employees, including regulatory processes, algorithm validation and negative know-how. We created an inventory of the items we believed were critical to the business and recommended these be captured and documented as codified organizational knowledge, in the form of FAQs, technical documents or best known methods. This would enable it to be transferable to the NewCo and capable of being shared across the business as it expanded or prepared for exit.
The Company has a strong innovation and R&D focus, and so we recommended that an Invention Disclosure System was implemented by NewCo to secure and capture inventions developed by NewCo’s staff.
Our IP Audit report provided the Company with an inventory of the critical IP assets to be transferred, and provided a list of actions to mitigate risks and strengthen the IP portfolio – which were signposted and prioritized as pre and post IP transfer to help with implementation.
IP Assets Appraised – Patents, Trade Secrets, Key Organizational Knowledge, Know-How, Technical Databases