Taking Security Over Intellectual Property PDF

Taking security over intellectual property

A note on taking security over intellectual property, including patents, trade marks, copyright and design rights.This note also contains links to a multi-jurisdictional guide to finance (which includes issues relating to taking security over intellectual property) and a detailed note on taking security over intellectual property in the United States.
Reference: www.practicallaw.com/2-202-0175
Intellectual property (IP) rights are a group of rights that protect the product of one persons creativity from unauthorised use by another person. IP is intangible and includes patents, trade marks, copyright and design rights. In respect of databases, copyright is complemented by a stand-alone statutory database right.
IP rights as security
IP is increasingly commercially valuable but, because it is intangible, it poses particular challenges for a lender wishing to take security over it. IP specific to a particular industry may be enormously valuable to the borrower but of little value to a lender who does not trade within that industry. Consequently, it is often of indeterminate resale value, and before granting the security interest, the lender should explore how it would exploit the IP if it had to enforce its interest. The value of IP rights can also diminish. For example: Design, trade mark and patent registrations may lapse irretrievably if renewal fees are not paid on time. A copyright, unregistered trade mark or design right will become virtually worthless if a third party successfully claims that use of the right involves an infringement of the third partys own IP right. Equally, the value of an IP right can fall if its owner fails to sue others who infringe it (such as the manufacturers of counterfeit goods or distributors of bootleg copies). The subsistence of IP rights can also be challenged; for example, in a copyright infringement claim, the defendant may allege that no copyright subsists in a painting because it is substantially a copy of a pre-existing artistic work. A key factor determining the value of a companys IP is how separable it is from the business as a whole. IP that generates an income flow (such as a film or music back catalogue) is much more easily valued and separated from the borrowers business as a whole than an IP right which is obviously valuable, but less separable or transferable (such as copyright in a businesss website pages). Value may also be affected if a "bundle" of IP rights subsists in a single product. For example, a pharmaceutical drug may be protected by trade marks (the proprietary name of the drug, the name and logo of the manufacturer, and possibly also the packaging), by copyright (in the
www.practicallaw.com/2-202-0175 1
instructional leaflet and the packaging get-up), by design right (in the packaging and the shape of the tablets) and by patents in the drug itself. These rights add up to more than the sum of their parts, and are of little value if separated. The natural solution is to take security over the whole portfolio of rights relating to the particular product, but this can also lead to problems if a particular right is used for other products as well, or if some of the rights are licensed-in (especially as most IP licences are terminable on the insolvency of the licensee). Aside from these issues, value may be difficult to determine because most IP rights are, by their nature, used by one company or by select licensees, and their marketability to other potential users is untested. The United Nations Commission on International Trade Law (UNCITRAL) published in early 2007 a report which set out the principles necessary for an effective regime of intellectual property asset financing and gave an overview of the different commercial practices for financing intangible intellectual property. The overview illustrates some of the practical difficulties that can arise both for borrowers and lenders in using inappropriate models to finance intellectual property assets.
Forms of security
Because IP is intangible, it is not possible to take a lien or a pledge over it, although occasionally a pledge will be taken over a chattel whose value is related to IP (such as a master tape for a film or piece of music). Security usually takes the form of a mortgage (an assignment by way of security) or a charge. Charges over IP may be fixed or floating (see Practice note, Taking security). Security is most commonly taken over IP in the context of a global debenture securing all the assets of a company. If the assets are specifically identifiable, the lender needs to decide whether to take a legal mortgage or an equitable charge over them. The advantage of a mortgage is that it can be enforced without the involvement of the courts; a charge, on the other hand, can only be enforced by a court order. The main disadvantages of a mortgage are that it involves much more complex documentation (a licence of the property back to the borrower), more complex perfection requirements (see Practice note, Perfection and priority of security) and continued maintenance of the IP (preventing infringement and maintaining registration). A charge does not require any of these. As mentioned above, if the IP right is used in the borrowers business, the lender taking security in the form of a legal mortgage will need to grant the borrower a licence to use the right. The borrower will normally expect the licence to be exclusive, not only to prevent the lender from granting one of the borrowers competitors a licence, but also because the holder of an exclusive licence can often bring infringement proceedings in its own name if the lender (who is also the IP owner and licensor) refuses to sue for infringement. If the assets can only be identified as a group rather than individually, it is not possible to take a mortgage or fixed charge over them, but a floating charge may be taken. (This is most likely to apply to unregistered rights such as trading names; see Legal mortgage over unregistered trade marks.) The advantage of a floating charge is that it leaves the borrower free to deal with the assets in the ordinary course of business. The disadvantage is that the lender has less control over the security. Floating charges provide less valuable security than fixed charges because the holders of floating charges do not get paid from the proceeds of sale of their assets until after any fixed charge holders and preferential creditors have been paid in full (and, subject to the ring-fenced percentage, set aside for unsecured creditors; see Practice note, Liquidators powers).
If a global debenture is used, which contains a floating charge over all assets of the company that are not subject to a fixed charge, then any IP rights that are not covered by fixed charges will be subject to the floating charge.
Registration of security interest

Under the Companies Act 2006, companies which are registered in England or Wales (and overseas companies which have complied with the registration requirements of the Overseas Companies Regulations 2009 (SI 2009/1801)) are obliged to register certain security interests (including debentures and floating charges) with the Registrar of Companies at Companies House within 21 days of execution of the transaction. A qualifying security interest that is not correctly registered will be void, so it is in the lenders interest to ensure that registration takes place. This obligation to register at Companies House also applies to limited liability partnerships (LLPs) (under the Limited Liability Partnerships (Application of Companies Act 2006) Regulations 2009 (SI 2009/1804)). Registration at Companies House must be made by filing Form MG01 (or Form LL MG01 for LLPs), the security document itself (section 860, Companies Act 2006) and the registration fee. For more information on registration of security interests, see Practice note, Perfection and Priority of Security.
Security over patents

Nature of patents Patents protect inventions. A patent gives its owner the right to prevent others from using the invention described in the claims of the patent. This right is generally enforced by civil litigation in the courts of the country where the patent was granted. Patent protection does not arise automatically; it is obtained by filing an application for a patent and having that application granted. In the UK, a patent will only be granted for an invention if it: is new; involves an inventive step; is capable of industrial application; and is not specifically excluded from patent protection (section 1, Patents Act 1977 (Patents Act)). The Patents Act provides that patents have a lifespan of twenty years and can be assigned or mortgaged (section 30, Patents Act). See also PLC IPIT & Communications, Practice note, Overview of Patents. Patents as security Patents are often of great value and can therefore provide suitable security for medium and short-term finance. Their value is, however, vulnerable to challenge both after and, under some patent registration systems, before the patent becomes registered. Indeed, it is usual for a defendant in an infringement action to counterclaim for a declaration that the patent is invalid.
In the UK courts, such challenges succeed more often than not. They are often based on the fact that there is so-called "prior art": that is, that the invention was publicly disclosed before the patent application was made. Prior disclosure anywhere in the world can render a patent invalid, but often such prior art only comes to light during the course of an invalidation claim. Challenges can also be based on a claim that the invention lacked the "inventive step" necessary to make it patentable. Satisfactory due diligence (for example, an investigation to try to identify prior art) can give some comfort as to the value of a patent, and the successful defence of an invalidation claim gives even more certainty, but it cannot guarantee validity. Lenders should take this vulnerability into account when considering patents as a form of security. A patent application is a property right and can therefore, in theory, form security, but it is of limited value as there is no guarantee that the application will be successful. Legal mortgage over patents Security over patents usually takes the form of a legal mortgage, which is created by assigning the patent to the lender by way of security. The assignment must be in writing, and signed by the assignor and assignee if it dates from before 1 January 2005; assignments dating from 1 January 2005 onwards need only be signed by the assignor (section 30, Patents Act; see PLC IPIT & Communications, Standard document, Assignment of patents, Pro-assignee and Pro-assignor versions and their accompanying drafting note). As the borrower will almost certainly need to use the patent in the course of its business, the lender (assignee) should also grant the borrower a licence enabling it to do so. The licence should be exclusive, as the borrower will not want the lender to be able to permit any of its competitors to use the patent. An exclusive licence allows the licensee to use the patent, to the exclusion of all others (including the licensor). (This is in contrast to a sole licence, under which both licensor and licensee can use the patent.) In most cases, the lender will be a bank and therefore will not be interested in exploiting the patents. However, if the lender is another group company, it may prefer to give a sole rather than an exclusive licence. See PLC IPIT & Communications, Standard document, Patent and know-how licence agreement and its accompanying drafting note. Registration of assignment, licence or security interest Assignments and licences of patents, and security interests in patents, should be registered on the Register of Patents within six months of their creation, for the following reasons: Priority between security interests in patents runs from the date of the application to register the transaction creating the security interest, rather than from the date of the transaction itself (section 33, Patents Act). A person with an unregistered right would lose priority to a holder of a subsequent, registered and inconsistent right. Failure to register within six months of the effective date of the transaction will mean that neither an assignee nor a licensee will be able to claim any costs or expenses in proceedings for an infringement that occurred before registration of it, unless he can satisfy the court that it was not practicable to register it in that period and that the transaction was registered as soon as practicable afterwards (section 68, Patents Act).
www.practicallaw.com/2-202-0175
The assignee of a patent cannot bring infringement proceedings until it registers the assignment and so becomes the registered patentee. Similarly, an exclusive licensee cannot bring proceedings in its own name until its licence has been registered. See PLC IPIT & Communications, Practice note, Registration of interests in UK patents and patent applications for more information about the registration of transactions. Equitable charge over patents It is possible to take an equitable charge over a patent and over any licence or sub-licence of a patent. The charge must be in writing and signed by both parties, otherwise it is void (section 30, Patents Act). It should be registered at the Patent Office within six months of the transaction, for the reasons given above in relation to legal mortgages over patents. (A charge which remains unregistered will be void against a liquidator or administrator of the company which owns the patent.) A fixed equitable charge can be taken over a patent, as it is a clearly defined asset. The charge should provide that the patent owner may not create other security interests in the patent, nor sublicense nor assign it without the lenders consent. The charge should also, ideally, include an executed form of assignment which can be held in escrow and dated by the lender if the security has to be enforced. Alternatively, the patent owner may give power of attorney to the lender to execute an assignment in the event of default. The lender should be aware, however, that patent offices in some countries may not recognise assignments made under such conditions (and if the assignment cannot be registered, the new owner cannot enforce it). For this reason, a legal mortgage is preferable to an equitable charge.
Security over trade marks

Nature of trade marks The terms "trade mark" and "brand" are often used interchangeably. Both refer to a sign that is used in commerce to distinguish a traders goods or services from those of his competitors. Registered trade marks are a statutory form of right governed by the Trade Marks Act 1994 (TMA). A registered mark gives its owner a monopoly over the use of the mark for the goods or services for which it is registered. This monopoly can be maintained indefinitely. Registered trade marks can be: Words. Logos. Numerals. Letters. Colours. The shape of the goods or their packaging. Sounds or smells, as long as these can be represented graphically. (Section 1, TMA.)
Registration of the mark is made for specified goods and/or services, and the application may be refused if the mark applied for is overly similar to an existing mark which has already been registered for the same or similar goods or services (section 5, TMA). For more information about trade marks, see PLC IPIT & Communications, Practice note, Overview of Trade marks. Trade marks as security Trade mark registrations and applications are both forms of property capable of forming security (sections 24 and 27, TMA). However, they sometimes offer poor security, for the following reasons: Their value depends on the perceived value of the product sold under that mark. For example, a trade mark name and logo for bottled water would become significantly less valuable if it were revealed that the source of the water was contaminated. The widespread availability of low-quality counterfeit goods which bear the mark can also decrease its value if they damage consumers trust in the quality of the brand. Their validity can be challenged, for reasons relating to the inherent distinctiveness of the mark itself (sections 3 and 46, TMA) or to the prior existence of conflicting third party trade mark rights (sections 5 and 47, TMA), or (in the case of registrations) because the mark has gone unused for a continuous five-year period (section 46, TMA). The value of trade mark applications is particularly uncertain, as it will be difficult to know whether the applications will be opposed by third parties or, if they are already under opposition, whether the opposition will succeed. A trade mark registration must be renewed every ten years from its application date, and failure to do so results in the mark ceasing to exist as a registered trade mark (section 25, TMA). It is therefore important for a chargee or mortgagee to try to ensure that a system is in place for paying renewal fees on time. The first two issues will be of less concern if the trade mark is well known and has been in use for a long time without challenge. Legal mortgage over registered trade marks Registered trade marks can be assigned by way of security to a lender. For a general form of assignment, see PLC IPIT & Communications, Standard document, Trade mark assignment, Pro-assignor and Pro-assignee versions. However, the company will probably need to use its trade marks in the course of its business. The assignment must therefore be accompanied by a licence allowing the company to use the trade marks. It is particularly important that the licence be exclusive, as additional licences could dilute the value of the mark. If the security includes trade mark applications, the licence can provide for a right to use the relevant unregistered marks until the applications mature to registration, at which point the licence will become a licence of those marks as registered marks. The licence should include terms aimed at preserving the trade marks value, such as obligations on the licensee to use the trade mark in a consistent manner and for a particular quality of goods or services, and to respond to third party infringements. It may be advisable to appoint an agent to monitor the licensees compliance. For a general form of licence, see PLC IPIT & Communications, Standard document, Trade mark licence agreement.
In this situation, it will be the lenders responsiblity (as the proprietor of the marks) to make sure that they are renewed as necessary. This can be outsourced to a firm of trade mark attorneys. In addition to registering the charge at the Trade Marks Registry, it should also be registered at Companies House under section 860 (7)(i) of the Companies Act 2006. Registration of assignment, licence or security interest As is the case for patents, an assignment or licence of a registered trade mark, or a security interest in it, should be registered within six months of the date of the transaction. An assignee cannot bring infringement proceedings until the assignment is registered, nor can an exclusive licensee bring proceedings in its own name until it has registered its licence. In addition, failure to register within six months will mean that the new owner or licensee cannot claim for costs and expenses arising from infringement which took place between the date of the transaction and the date of registration. Until an application has been made for registration of a transaction, the transaction is ineffective as against a person acquiring a conflicting interest in, or under, the registered trade mark in ignorance of it (section 25(3), TMA). Therefore a person with a registered interest would take priority over the holder of a prior unregistered interest of which he was unaware. For more information about registering transactions, see PLC IPIT & Communications, Practice note, Registration of interests in UK trade mark applications and registrations. Equitable charge over registered trade marks It is possible to give an equitable charge over a registered trade mark, which would avoid the need for the lender to grant a licence back to the borrower. If an equitable charge is given, it should include obligations on the borrower to preserve the value of the marks by: Using them consistently. Renewing them as necessary. Challenging infringers. A security interest over a registered trade mark is registrable at the Trade Marks Registry (section 25, TMA) and should be registered within six months of the transaction or as soon as practicable thereafter to secure priority over subsequent conflicting interests (see Taking security over intellectual property). Legal mortgage over unregistered trade marks The registration of trade marks is not mandatory, and many businesses rely on unregistered trade mark rights. Such rights consist in the customer goodwill attaching to the names, logos or other signs under which the goods or services are marketed. If another person makes a misrepresentation to the businesss customers that damages (or threatens to damage) that goodwill, then the business will have a cause of action in passing off. Passing off is a common-law cause of action, and is more expensive and difficult to enforce than registered trade mark rights, because the claimant has to prove: The existence of goodwill; A misrepresentation by the defendant; and
A likelihood of damage to the claimants goodwill. Unregistered marks do not often make good security, as it is rarely possible to isolate them from the rest of a business. They tend to be inextricably linked with the goodwill of the business and therefore need to be assigned together with that goodwill. This means, in effect, that they can only be assigned together with the business as a whole. Equitable charge over unregistered trade marks While it is theoretically possible to take an equitable charge over unregistered trade marks, in practice this would involve taking a fixed charge over the borrowers business, the goodwill in the business and the unregistered trade mark together with a floating charge over the goods of the business. This would be indistinguishable in effect from a charge over the whole business. However, if security is to be taken over the entire business and that business trades under unregistered trade marks, then it is usually worth specifying the marks.
Security over copyright

Nature of copyright Copyright is designed to reward authors for the creation of original works (such as books, films, songs, paintings, recordings and computer programs) by giving them a monopoly on the copying of such works. Unlike a patent, it does not entitle the owner to prevent the use of other works which were independently created (and therefore not copied from the owners work), however similar these may be. Copyright covers more than just wholesale copying: the test is whether a substantial part of the work has been copied. Copyright lasts for a fixed period of time. For most types of works, this period is the life of the author plus 70 years from the end of the calendar year of his death. Copyright as security Copyright can be an appropriate asset over which to take security, because it lasts for a long time and is often very valuable (software, for example, is protected by copyright). However, unlike patents and trade marks, copyright is not capable of registration, and it arises automatically on creation of the work. Consequently, there are some potential disadvantages of copyright as a form of security: As copyright is not registrable, its origin (and therefore its ownership) can only be determined by documentary evidence of when, and how, the work was created. If satisfactory documentation is not available, this may affect the copyrights value. Even if documentary evidence of the creation of the copyright is available, the subsistence of copyright may be challenged, on the basis that the requisite statutory threshold of originality has not been reached. See PLC IPIT & Communications, Practice note, Overview of Copyright: Originality. Despite these potential problems, the use of copyright as a security asset is common in some industries, notably the film and music industries. This is probably because copyright (in, for example, a musical score or a book) is a "stand-alone" right that can be sold on its own and which generates royalty income (making its value more ascertainable). The lender should try to ensure that the copyright owner, and any licensees who use the copyright, are contractually obliged to take certain practical steps to preserve the value of their copyright.
For more information on these, see PLC IPIT & Communications, Practice note, Management and exploitation of copyright: Protection of copyright . Moral rights Authors of copyright works have certain statutory rights ("moral rights") to prevent certain uses , Copyright, Design and Patents Act 1988 (CDPA)). These rights are of the work (chapter IV non-assignable, and cannot therefore form part of any security. However, as they can hinder the free use of the work, the lender should try to ensure that all relevant authors have given written waivers of their moral rights. For a form of waiver, see PLC IPIT & Communications, Standard document, Waiver of moral rights. Legal mortgage over copyright A legal mortgage over copyright would involve the assignment of the copyright, in writing, and signed by the assignor (section 90(3), CDPA). The lender should ask for a waiver of moral rights, a further assurance clause and appropriate warranties, notably a warranty that the company is the owner of the copyright. The lender should also see copies of any documents that constitute evidence of the borrowers claim to ownership. For an indication of the types of warranties that might be sought, see PLC IPIT & Communications, Standard document, Assignment of intellectual property rights, Pro-assignee and Pro-assignor versions. Each time a copyright work is substantially amended (whether in terms of quantity or by the making of a small but important change), a new copyright work comes into existence. It is therefore important to ensure that the assignment covers future copyright in the specified works. This is particularly important in relation to copyright in software programs, which are almost always subject to frequent changes. The assignment should state that copyright in future works will automatically pass into the lenders ownership without the need to execute further assignments. As the copyright is likely to be a necessary part of the borrowers business, the person taking the mortgage would then have to give the borrower a licence to use the copyright assigned by way of security. Granting a licence over copyright requires no particular formalities, but it is advisable for a licence to be in writing. Again, the borrower may wish a further assurances clause and certain warranties to be included. Equitable charge over copyright Copyright can be the subject of a fixed or floating equitable charge. The charging document states that the borrower is the owner of the copyright and that the borrower is obliged to maintain its value during the life of the security. As copyright is an unregistered right, the lender will need to investigate relevant materials which provide evidence that the rights exist and that the borrower is either the first owner of them or the beneficiary of a valid assignment. A lender who is taking security over copyright in software should seek to have the source code placed in escrow to guard against being left with an indecipherable program (for a simple form of escrow agreement, see PLC IPIT & Communications, Standard document, Single licensee escrow agreement (NCC Group form)). The chargee of copyright in a film or sound recording may wish to take a pledge over the master recordings.
Security over registered designs

Nature of registered designs
A design registration relates to the appearance of the whole or part of a product resulting from the features of the design, in particular the: Lines. Contours. Colours. Shape. Texture. Materials of the product. Its ornamentation. (Section 1, Registered Designs Act 1949 (RDA).) To qualify for registration, a design must be new and have "individual character" in the sense that it gives an overall impression which is different from that given by any design published before. A design registration gives a patent-like monopoly, in that it protects against the use of independently created designs which give the same overall impression. Registered designs can last for a maximum of 25 years. See also PLC IPIT & Communications, Practice note, Overview of Registered designs. Registered designs as security Most registered designs are of limited value as security, as they are narrow in scope (protecting only the exact form of the design which is contained in the drawings filed with the application). Like a patent, a registered design is vulnerable to being declared invalid if it is found that it was not entirely new at the date of application for registration. They are therefore unlikely to form good security on their own. Legal mortgage over registered designs It is possible to assign a registered design by way of security. Any assignment must be in writing and must be registered with the Designs Registry (section 19, RDA). (For a form of assignment, see PLC IPIT & Communications, Standard document, Assignment of industrial designs, Pro-assignor and Pro-assignee versions.) If an unregistered design right subsists in a registered design and they are both owned by the same person, a transfer of the registered design automatically implies the simultaneous transfer of the unregistered design right unless a contrary intention is made clear (section 19(3B), RDA). As is the case for other types of IP rights, a licence back to the user of the design right will usually be necessary. For a standard form of licence, see PLC IPIT & Communications, Standard document, Licence of industrial designs. Equitable charge over registered designs Registered designs can also be subject to an equitable charge, which should be registered at the Patent Office within six months of the transaction. Any document not referred to in the register will not admissible in court as evidence of the relevant security interest unless the court otherwise directs. Where unregistered design right subsists in a registered design, the registrar at the Patent
Office may not register an interest unless satisfied that the person entitled to that interest is also entitled to a corresponding interest in the unregistered design right (RDA).
Security over unregistered design rights

Nature of design right An unregistered design right, created by the CDPA, is a right to prevent the unauthorised manufacture and distribution of articles made to an original design. Registration of the design is not required; the right arises as soon as the design has been recorded in a document or embodied in an article made to the design. There is a low test of originality for protection. Design rights protect the work of designers who produce purely functional products. Registration of a design gives the designer a monopoly on the production of the design product either for ten years from the end of the year when the articles made to that design were put on the market (if this occurs within five years of creation of the design) or, failing such marketing, for 15 years from the end of the year when the design was first recorded in a design document. For the last five years of the protected period, the designer is required to grant licences of right to other producers either on agreed terms or, failing agreement, on terms set out by the Comptroller of Patents, Designs and Trade Marks (section 237, CDPA). Items that take a specific form so that they can fit into a larger design (for example, spare parts for a car) are excluded from design right protection. This is to prevent designers from using design right to create a monopoly over spare parts for machinery. Surface decoration of a design is not protected by design right (although it may qualify for protection as a copyright work). See, also, PLC IPIT & Communications, Practice note, Overview of Design right. Design rights as security Design right is rarely a sufficient form of security of itself, and will usually form security as part of a larger portfolio of IP rights. This is because it is an unregistered right and, as is the case for copyright, its subsistence is therefore is subject to challenge on a number of grounds. Furthermore, its term may also be put into doubt where it runs from the date of first marketing or recordal. To add to these difficulties, design right is a relatively new right (created by the CDPA in 1988) and case law relating to it is still developing, and this adds to the uncertainty of the value of design rights in general. The availability of licences of right will greatly diminish the value of the design right, so the lender should always check when articles were first made to the design, or when the design was first marketed, in order to establish when the design right is due to expire. Legal mortgage over design right A design right can be assigned by way of security. The assignment must be in writing and signed by the assignor (section 222(3), CDPA) in order to be valid. It should include a further assurance clause and warranties as to the assignors ownership of the design right. For an example of the types of warranties that can be sought, see PLC IPIT & Communications, Standard document, Assignment of industrial designs, Pro-assignor and Pro-assignee versions. The lender should also request copies of documents that give evidence of ownership.
11
If a design right is also protected by a registered design and the same person owns both rights, any assignment of the registered design will also be assumed to be an assignment of the design right unless it is made clear that this is not the intention (section 224, CDPA). Equitable charge over design right Unregistered design rights can be the subject of fixed and floating equitable charges. The charging document should state that the borrower is the owner of the design right and that the borrower has an obligation to maintain its value during the life of the security. If the design right is unregistered, the lender should ask to see evidence that the right exists and that the borrower is either the first owner or is the beneficiary of a valid assignment of it.
Securitisation
Securitisation is not a form of security for a loan, but is an alternative way of using IP to raise capital. How intellectual property is securitised Securitisation developed as a tax-efficient form of financing for companies with large real estate portfolios. Securitisation usually takes the form of a sale by the owner of the IP to a special purpose vehicle (SPV) for an amount equal to or slightly less that the value of the portfolio of assets. The SPV , issues debt securities to pay for the purchase of the assets, usually in the form of bonds. The SPV in order to secure the money raised, also grants a charge over the assets to a security trustee who holds it on behalf of the investors (and any other person with an interest in the security). The SPV is usually a company with no employees, debts or assets other than those to be securitised. The original owner/seller of the IP therefore usually administers the securitised assets on behalf of the SPV . For more information, see Article, Intellectual property securitisation: The creation of a new asset class, PLC Magazine, 1998. Intellectual property suitable for securitisation Most IP lasts for a reasonably long period of time: 10 or 15 years for design right. 20 years for patents. 25 years for registered designs. 70 years plus the remainder of the life of the author for most copyrights. A potentially indefinite time period for trade marks. This is one of the features that makes IP suitable as an asset to secure debt. To make it suitable for securitisation, the IP must have certain other features: It must generate revenue. This means that copyrighted material such as a composers back catalogue or a library of films that earns revenue every time it is broadcast can be securitised. An alternative might be designs, patents or trade marks that are licensed and creating income for the owner. In some cases, it may be possible to restructure the IP allocation within a group of companies by transferring ownership of all the IP rights to a
single company which then grants licences to other members of the group, so creating an income stream. The income from it must be creditworthy. This may be assessed in different ways. If the receivables from the IP come from a small pool of creditworthy obligors, then the value of the receivables will be enhanced by the standing of the persons making the payments. An alternative way of valuing the income stream is used for property that generates small amounts of revenue from a large number of obligors. The individuals may have no credit rating, but the statistical reliability of the obligors as a group may be high. In order to be able to assess the income stream on the basis of their historical performance, the assets must have been generating revenue for at least five years. The financial performance of IP varies widely, and it is important to be aware that certain types of IP generate more revenue during the first five years of their existence than subsequently (and vice versa). It must be separable from the business as a whole. The economic value of IP is difficult to separate from the rest of the business, because the value of a trade mark or patent depends on the extent to which it is used. In the case of copyright, it can also depend on the extent to which the works (for instance, music or books) are promoted by the record company or publisher. Mature IP rights are less vulnerable to changes in marketing and it is therefore much easier to calculate their value. A possible solution to this problem would be to appoint the original owner and securitiser of the rights as the agent of the SPV that will own the rights and issue the debt. The agent is usually responsible for: Collecting the payments. Maintaining registration. Enforcing against infringements. Marketing the IP. This structure has the dual benefits of: Providing the original owner of the rights with an incentive (in the form of a servicing fee or deferred consideration) to continue promoting the IP. Giving the original owner a high level of control over the securitised IP rights, which may be essential to the original owners business.
13
Boxes
Taking security over intellectual property in other jurisdictions
Multi-jurisdictional guide For a multi-jurisdictional guide to finance, including issues relating to taking security over intellectual property (in question 6), see PLC Cross-border Finance Handbook 2010. United States For a detailed discussion of special issues and considerations with respect to security interests in intellectual property in the United States, relevant to both corporate and finance transactions, see PLC US Finance, Practice note, Intellectual Property Security Interests.
14
Article Information
RESOURCE INFORMATION
The fulltext is available at http://www.practicallaw.com/2-202-0175

General
Article ID: 2-202-0175 Document Generated: 20-May-2010 16:38:28

Jurisdiction
England http://www.practicallaw.com/topic9-103-0624 Wales http://www.practicallaw.com/topic4-103-1070

Subject
Asset finance http://www.practicallaw.com/topic5-201-5200 Miscellaneous: IP http://www.practicallaw.com/topic0-103-2076 Security and quasi security http://www.practicallaw.com/topic6-103-1106 Trade marks http://www.practicallaw.com/topic2-103-2080 Designs http://www.practicallaw.com/topic4-103-1273 Patents http://www.practicallaw.com/topic2-103-1306 Copyright http://www.practicallaw.com/topic0-103-1270
References
Single licensee escrow agreement (NCC Group form) (http://www.practicallaw.com/0-100-9636) Patent (http://www.practicallaw.com/0-107-6980) Assignment of patents (pro-assignor) (http://www.practicallaw.com/0-500-6148) Assignment of intellectual property rights (pro-assignee) (http://www.practicallaw.com/0-500-7124) Overview of patents (http://www.practicallaw.com/1-107-3660) Assignment of patents (pro-assignee) (http://www.practicallaw.com/1-500-6096) Assignment of industrial designs (pro-assignee) (http://www.practicallaw.com/1-501-2714) Taking security (http://www.practicallaw.com/2-107-4032) Limited liability partnership (LLP) (http://www.practicallaw.com/2-107-6762)
15
Registration of interests in UK patents and patent applications (http://www.practicallaw.com/2-201-3387) Taking security over intellectual property (http://www.practicallaw.com/2-202-0175) Intellectual property securitisation: The creation of a new asset class (http://www.practicallaw.com/3-100-8918) Securitisation (http://www.practicallaw.com/3-107-7233) Assignment of trade marks (pro-assignee) (http://www.practicallaw.com/3-500-6552) Overview of Trade marks (http://www.practicallaw.com/4-107-3668) Assignment of industrial designs (pro-assignor) (http://www.practicallaw.com/4-501-2741) Trade mark assignment (http://www.practicallaw.com/5-100-9629) Overview of Design right (http://www.practicallaw.com/5-107-4686) Intellectual Property Security Interests (http://www.practicallaw.com/5-383-5929) Perfection and priority of security (http://www.practicallaw.com/6-107-5015) Goodwill (http://www.practicallaw.com/6-107-6661) Trade mark (http://www.practicallaw.com/6-107-7401) Registration of interests in UK trade mark applications and registrations (http://www.practicallaw.com/6-201-3390) Trade mark licence agreement (http://www.practicallaw.com/6-500-6579) Liquidator's powers (http://www.practicallaw.com/7-107-3983) Overview of Registered designs (http://www.practicallaw.com/7-107-4685) Assignment of trade marks (pro-assignor) (http://www.practicallaw.com/7-500-7007) Assignment of intellectual property rights (pro-assignor) (http://www.practicallaw.com/7-500-7149) Waiver of moral rights (http://www.practicallaw.com/8-107-7570) Assignment of patents: drafting note (http://www.practicallaw.com/8-500-6253) Patent and know-how licence agreement: drafting note (http://www.practicallaw.com/8-500-6516) Overview of Copyright: Originality (http://www.practicallaw.com/9-107-3741) Copyright (http://www.practicallaw.com/9-107-5995)
Management and exploitation of copyright: Protection of copyright (http://www.practicallaw.com/9-386-5641) Patent and know-how licence agreement (http://www.practicallaw.com/9-500-6460) Licence of industrial designs (http://www.practicallaw.com/9-501-2753)
Practical Law Publishing Limited, Practical Law Company 1990 - 2010. http://www.practicallaw.com. Subscription enquiries +44 (0)20 7202 1210 or email subscriptions@practicallaw.com Please read our Terms of Use (http://www.practicallaw.com/9-103-0884), Trade Marks (http://www.practicallaw.com/9-265-9958) and Privacy policy (http://www.practicallaw.com/jsp/privacy.jsp)
17

Taking Security Over Intellectual Property PDF

Transféré par

Informations du document

Titre original

Copyright

Formats disponibles

Partager ce document

Partager ou intégrer le document

Options de partage

Avez-vous trouvé ce document utile ?

Ce contenu est-il inapproprié ?

Droits d'auteur :

Formats disponibles

Taking Security Over Intellectual Property PDF

Transféré par

Droits d'auteur :

Formats disponibles

Taking security over intellectual property