The Client

Metis Partners was engaged by a large retailer, operating across Australia and New Zealand, which was expanding to the US Retail Market via a joint venture, with the involvement of a new technology partner.  The JV was expected to utilize key IP assets owned by the Company, including its existing network of critical suppliers and extensive organizational knowledge regarding store layout and procurement. It was also expected to create and develop new IP assets.  

The Assignment

Metis Partners was asked to perform an IP Audit to identify and appraise the IP assets and IP rights underpinning the planned JV to be launched in the US. We were also asked to value the IP assets that would be committed to the JV and make recommendations that we believed would protect the IP owned by the Company from subsequently leaking out from the JV.  

Our Approach

Using our proprietary Metisology® we identified the JV would likely rely on a mix of critical IP assets, including critical partners and suppliers, key organizational knowledge, brand and reputation, and formal IP to generate revenue and secure its competitive advantage. We provided our analysis on the extent and quality of the IP and the actions that in our opinion were absolutely necessary prior to transferring to the JV, and those that would strengthen the IP portfolio going forward. 

We recommended that the rights to both the Company’s and JV’s IP assets be explicitly defined in binding legal covenants, and that all supply arrangements be similarly formalized between the JV and the Company to avoid ‘IP leakage’. We recommended that the Company negotiate and retain ownership of background IPR, foreground IPR and sideground IPR in relation to the JV, which proved pivotal in the trading periods to follow.  

The Outcome

The JV successfully traded and captured US market share, but more importantly went on to create significant and highly valuable IP in respect of digital retail software solutions. The Company had actioned our recommendations and therefore retained legal ownership of this valuable digital real estate when the trading retail JV was impacted by the COVID-19 pandemic and forced to close stores. The Company recently engaged us to perform a second Valuation on the IP portfolio created by the JV, to inform its strategy and support an IP transfer.  

The investment made in IP was not lost when the trading entity suffered. In fact, the IP assets created remain hugely relevant as the retail sector looks for innovative ways to pivot business models and relaunch, post-COVID. This IP portfolio will likely shape and support future retail models to come.  

IP Assets Appraised & Valued – Key Organizational Knowledge, Critical Partners & Suppliers, Brand & Reputation and Trade Marks