Case study: IP Commercialisation (Haemokinesis)

In late 2011 our client incorporated a company and during 2012 we provided advice regarding the initial structure and business establishment aspects.  We also provided employment law advice and associated documentation to allow the company to further secure and protect IP rights.

By 2013 our client had refined concepts for testing hardware, that supported the testing method, to a point where third party engineers were engaged to build prototype equipment.   We drafted services agreements with third parties and assisted by advising on arrangements to secure copyright in created and developed IP, to assign copyright in prototype designs and to share knowhow and confidential information.

In 2014 the specification for the testing product had been refined to a point where contracts for key ingredients were needed.  We prepared term sheets and assisted with initial negotiations for procurement of the proprietary ingredients.  We introduced a law firm based in Asia to assist our client and worked with lawyers at that firm to navigate complex confidentiality and contractual issues.

In parallel with the biomedical testing product our client worked with an Australian University on an idea to simplify and engineer a second related biomedical test.  We assisted with negotiation of ARC Linkage Project Research agreements.  In time, following success of the development work, we also assisted with documentation that granted our client global exclusivity to commercialise core IP rights.

With R&D continuing on the biomedical testing product suite, our client conceived of a method for tracking and managing both biological material and test results.  We introduced a patent attorney who worked with the company and ultimately filed PCT applications.

Our client reached a point where self funding for R&D expenditure on both product hardware and testing processes, lab construction and fit out, staffing and initial product marketing could not continue.  We provided capital and debt raising advice.  For various commercial reasons initial capital raising was undertaken in both Australian and US markets.  We assisted in preparation of a suitable information memorandum, management of due diligence and disclosure statements and Australian law advice regarding the initial offer documentation.  We introduced and worked with US counsel on the project.

In 2015 our client negotiated an initial product distribution agreement with an EU based distributor.  We prepared a suite of product distribution agreements which subsequently became precedent agreements for the company. In that year, after more than 12 months of work, our client secured a private investor and the resulting capital raising valued the company at approx. A$33 million.  We prepared shareholder and subscription documentation and managed completion of the investment transaction.  We advised on board establishment and corporate governance matters.

By early 2017 our client was continuing to obtain key regulatory approvals in Australia and abroad; had commenced product sales in the EU, Asia, Australia and New Zealand; had signed a distribution agreement with a global healthcare company for one of its core products in both US and Canadian markets; and was looking at further debt and capital raising options.

It has been very rewarding to work with this client over several years.  Our firm is large enough to provide specialist intellectual property law and commercial law expertise to a project such as this, and our lawyers have very broad connections and relationships with other genuine specialists that have assisted and enabled global commercialisation of a great Australian idea.