Luxtaltek

How we help our clients acquire a patent portfolio

Background

Significant efforts are currently being made to develop new products which have less impact on the environment, and patents are available to innovators to help them to protect their investment in environmental technology. One area in which particular efforts are being made is lighting. Traditional incandescent light bulbs waste significant amounts of energy through generation of heat. LED technologies have been identified as offering the potential to produce light with much less energy because very little heat is generated.

Mesophotonics Ltd is an innovative, UK-based company that had developed some groundbreaking new LED technology. Because of the gradual migration towards LED lighting for use in homes and cars, as LED devices become increasingly sophisticated, this technology was potentially very valuable.

The issue

However, Mesophotonics were not experienced in manufacturing and decided not to exploit the technology themselves, but to sell it together with their IP portfolio. Their IP portfolio comprised patents and patent applications relating to a number of new LED-related inventions.

Withers & Rogers were approached by a leading Taiwanese patent firm to represent Luxtaltek, and asked to advise them on the acquisition of the patents. As is often the case, the time available for carrying out the due diligence work was very short since completion of a deal had to take place by a certain date.

The solution

We carried out a ‘due diligence' exercise on all the patents and applications within the portfolio, identifying exactly what IP rights existed and ensuring that those rights were in force: for example, checking the status of cases with individual patent offices, ensuring that all deadlines had been met, checking that fees had been paid up-to date and ensuring that the patents listed did, in fact, exist. During negotiations, a number of IP issues arose which needed to be resolved and we assisted Luxtaltek in bringing the deal to a successful conclusion.

The outcome

Although in this case we were acting for Luxtaltek, our extensive knowledge of IP meant that were able to act as a facilitator for the deal. Mesophotonics achieved a favourable return on their investment in the technology and Luxtaltek obtained the rights to put this significant new technology into production.

What the client says

"We were impressed by the support Withers & Rogers were able to give in ensuring an effective acquisition of this IP portfolio. With a necessarily tight deadline imposed, the team proved to be very flexible and helpful and were able to quickly assess the true status of the IP rights."

Sean Lin, President and CEO, Luxtaltek

"We use Withers & Rogers because we have found them to provide extremely practical, commercial advice at very competitive rates in relation to our patent and I.P issues."

Peter Reay, Chief Executive Officer, i2r Packaging Solutions Limited