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bodreaux

12/06/06 6:08 PM

#102384 RE: brewskih #102140

No problem, I can illustrate as you have but not mention specific companies due to disclosure issues. Many that I have seen and dealt with are smaller companies getting their IP out via larger players, much like NEOM is trying to do. My background is oilfield so I'll illustrate accordingly.

A small capital squeezed company developes a highly promising revolutionary technology that it has patents granted on in the US, EU, CA and other developed areas. The technology is new, but is proven to work as invented, as advertised,and has multiple applications in new areas and markets. There are several issues that must be dealt with, time (patents have finite lifes), and money (small company unable to exploit the advantages due to capital contraints) being the biggies. Options include outright sale (not advantageous and puts parties as odds because small company sees unlimited potential and doesn't want to leave anything on the table, while the large company is concerned about the risks of bringing a new product to market as there is nothing tangible to parallel) or a royatly based solution where the big company takes the ball and runs with it, with the smaller company participating in a favorable royalty based on revenue. Up front fees inversely tied to royalty percentage in typical agreements. I have personally been involved in this scenario.

In dealing with one of the largest IP firms in the country, and one of the brightest IP minds as well, it was obvious that this was the preferred method of dealing with a situation that lacked tangible comparative models. After closing this deal, and working with the bigger company for several years, I found that to be the case. There was occasion where they would outright buy the new tech out because it had tangible comparisons in place. But anytime it was a "new" or "revolutionary" situation, they preferred the royatly arrangement. It had a high rate of success by allowing the large fish to broaden it's market share and appear tech savy, while the smaller fish entered markets it couldn't even dream of based on capital constraints.

I find the parallel to NEOM quite remarkable in that they face a similar situation that I went through as a small business owner, and subsequently as part of a large multi-national company. Seeing both sides of the issue (admittedly in a different industry), I firmly believe that NEOM is best served to follow a simlar path in their launches. A fixed $ amount will most likely be unfair to one of the parties, while a cooperative royalty based solution will allow for a fluid arrangement. The agreements that I have seen all involve similar dynamics as above and are limited in scope to one industry. My opinion relating to other industries comes from my conversations with patent attorneys who make their living drafing license agreements.