Crown Copyright Open Government Licence 3.0
On Thursday 9 May 2024 I attended the Finance and Innovation Conference which took place at the Menai Science Park on Anglesey. I wrote about my visit in M-SParc's Finance and Innovation Conference on 10 May 2024 in NIPC Wales. Two of the most interesting conversations were Gwenllian Owen's discussion with a group of business angels and Edward Thomas's discussion with Steve Livingston and representatives of several local financial institutions. All of those angels and institutions offered funding of various kinds to early-stage enterprises whose assets were likely to consist of little more than a patent or patent application or sometimes just an idea for an invention or business, A question that I was bursting to ask them was how do you value the assets of such a business?
Because of the very full programme, there was not enough time for me to ask that question to either group of speakers so I decided to research it for myself. This is what I have come up with. The short answer is that a patent (or any other intellectual property right for that matter) is what a willing and informed assignee would pay a willing and informed assignor bargaining at arms' length. I reached that conclusion after reading Valuing Your Intellectual Property which was published by the UK Intellectual Property Office on 12 Dec 2014 and last updated on 4 Jan 2022, How do you measure patent value? published by the European Patent Office and Valuing Intellectual Property Assets published by the World Intellectual Property Organization, the United Nations specialist agency for intellectual property. The IPO's guidance incorporated the above animation.
Each of those publications refers to three methods of valuations:
- the cost method
- the market value method, and
- the income or economic benefit method.
The "cost method" is the owner's expenditure on developing the intellectual asset and is likely to include such costs as labour, cost or hire of premises, plant and equipment, raw materials, consultancy fees, prototyping and testing and patent prosecution. The attraction of this method is that the purchaser does not have to incur those costs but the drawback is that the assignor may well have gone about his or her research and development work in the most efficient way. Also, the IP right may not protect the asset as well as it might. Expect a lot of horse-trading between the owner and his or her buyer, investor or lender.
The "market value" method is to compare the proposed transaction with similar transactions relating to similar intellectual assets. That is likely to be more accurate than the cost method where the relevant information is available because it is about transactions that have actually taken place. One problem is that the parties may not wish to publish information about their deals. Another is that the times may have been different. A transaction that makes sense when interest rates or low or market demand is strong may be unviable now. Yet another problem is that there may be significant differences between the invention in one transaction and the invention in another. Also, newly formed businesses or businesses operating in a new technology or market may not be able to point to comparable data,
The "income" or "economic benefit" is the deduction of past and anticipated costs of developing the asset from the past and anticipated revenues that it may have and may continue to generate. The problem with this method is that it requires a lot of crystal ball gazing and is likely to be subject to a lot of wishful thinking. However, if there are some licensing deals producing verifiable royalties or an income-generating invention it may be the most accurate method yet. According to the WIPO, the income method is the most commonly used method of valuation.
There are businesses like Ocean Tomo that hold IP auctions from time to time. I have no personal experience of them so I can neither recommend nor not recommend them. Readers contemplating such services should make their own enquiries, take their own advice and form their own views as to whether an auction would benefit them.
There are also businesses like Inngot which offer valuation services. Inngot was co-founded by a distinguished academic lawyer who has recently retired as Principal of Bangor University. I have shared a platform with one of its former employees on two occasions very successfully and have high regard for its publications. However, I have no experience of its valuation services.
There are businesses like Ocean Tomo that hold IP auctions from time to time. I have no personal experience of them so I can neither recommend nor not recommend them. Readers contemplating such services should make their own enquiries, take their own advice and form their own views as to whether an auction would benefit them.
There are also businesses like Inngot which offer valuation services. Inngot was co-founded by a distinguished academic lawyer who has recently retired as Principal of Bangor University. I have shared a platform with one of its former employees on two occasions very successfully and have high regard for its publications. However, I have no experience of its valuation services.
A first step for any business which wishes to value its IP would be an IP audit. Readers may wish to consult How to Use an IP Audit which I wrote in NIPC News on 13 Jan 2022. They may also wish to use the IPO's handy IPR Valuation Checklist. While I do not carry out IP audits myself I can certainly address legal issues that may arise in the course of such exercises such as construing patent claims. Anyone wishing to discuss this article may call me during office hours on 020 7404 5252 or send me a message through my contact form.
