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; and
- 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 volunteers
time to serve on the Board of Directors of the Clallam Business Incubator,
and has been 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 $350 MM 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 $4 MM);
- 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 ~ $12 MM);
- Sale of a major
division of an electronics manufacturer, responsible for IP side of
deal (transaction value > $100 MM);
- Acquisition by
a foreign buyer of a US regional brewer involving copyrights, trademarks,
and key-man consulting agreement including rights of publicity and privacy
(transaction value $70 MM);
- Consulting on acquisition
of U.S. and foreign patent portfolio of a target company for a major
semi-conductor equipment manufacturer (transaction value >$35 MM);
- 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 > $25 MM);
- 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 > $35 MM);
- 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 sub-sidiary
and major oil company, including license under Institute patents, sponsored
R&D, 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 $48 MM, 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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