The Gatherer Volume 6

IN THE SPOTLIGHT WITH ALBERT FERRALORO

A lbert Ferraloro is one of our most experienced practitioners, frequently assisting clients with the management of, and strategic considerations around, commercialisation of their IP assets. With both private practice and in-house experience, Albert works with a wide range of clients across many different industries – from start-ups and SMEs, through to large, established companies who are leaders in their field – providing practical guidance and legal advice in relation to the management and protection of intellectual property. Q: Tell us about the greatest challenges you see being faced in today’s environment as your clients are striving to achieve market share and scalability with their innovations A: Identifying or recognising those key customer/business opportunities that come along from time to time is one part of the challenge, but so too is being able to react and deliver when an opportunity does present, as often those two things do not align as you’d like them to. Things like timing, connections, and even luck, can have a significant bearing on business success, but being able to recognise an existing problem or need and being

positioned to offer a unique solution is more likely to lead to traction in the market and business security than developing a product or offering and then trying to find a home for it. Managing business growth and the rate of expansion, both in terms of keeping up with or ahead of the game with the particular product or service offerings that are the focus of the business, but also in terms of other operational issues, can also prove very challenging. Operational issues that require to be addressed as a business seeks to step up to a next level can come in all shapes and sizes depending on the commercial aims of the business. Some key issues include bringing together the right leadership team to successfully take the business forward, sourcing and securing funding to support growth plans (and of course continuing to manage cash flow), and finding the right people to join the team when scaling the business, both in terms of technical ability and good cultural fit for the organisation. Other business issues that need to considered and managed can be around targeted BD and marketing endeavours, building strategic relationships with partners, suppliers, distributors and the like, and also of course in terms of recognising and managing IP issues and safeguarding the organisation’s valuable IP assets. Q: What are some of the key considerations you see from an IP perspective that people should be thinking about when taking their

innovation to market? A: Considering protection options at the right time is very important. With certain protection options if this is done in the wrong order, opportunities to secure exclusive rights or the like can be significantly compromised or even lost. Proper consideration of protection options is also premised on being able to identify, capture and suitably evaluate new innovations and solutions as they are developed within a business. Being able to leverage or reflect value in the IP assets within a business necessitates that those IP assets are understood, suitably safeguarded and managed. IP rights also need to be thought of more broadly than just a tool which can be used to sue someone who may be doing something similar in the market. IP rights can indeed be asserted against infringers in certain circumstances, but they can also be used in other ways to support commercial aims, including in respect of simply keeping competitors at bay, attracting business and potential collaborative partners, supporting capital raising activities, and providing opportunities to realise other revenue streams in the form of licensing and royalty based income. Careful consideration also requires to be given in respect of freedom to operate (FTO) issues. Protecting and leveraging your own IP assets is certainly important, but very often, as or more important is understanding what third party IP rights exist in

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