FOR IP PROFESSIONALS

Royalties

Royalties are the payments associated with licences. These are paid to the owner of the IP by the person licensed to commercialise the IP.

Royalties on sales

Usually royalties are expressed as a percentage of the product's sale price. However, many factors influence a royalty rate. These include:

industry type, as different industries have different benchmarks for what are appropriate rates
state of IP development, as the closer the resulting product or service is to a market-ready state, the higher the royalty that can be secured
relative bargaining positions of the licensor and the licensee.

Calculating sale price

There is no standard 'sale price' where a royalty on sales is calculated.

The starting point is usually the price at which the product is invoiced. From this, it is usual to make different types of deductions, such as sales tax, GST, turnover tax, import or export tax, excise duty, or a customs duty.

Freight and insurance costs are sometimes factored into the definition, where these costs are added to the invoice cost and appear as separate items on the invoice.

Ramped-up royalties

Sometimes royalties may be 'ramped up', that is, as product sales reach certain milestones, the royalty rate increases. For example:

sales below $10 million - 5 per cent royalty rate
sales above $10 million - 6 per cent royalty rate

Royalties on sub-licence fees

Sub-licence fees are typically royalties received by a licensee from a sub-licensee in relation to product sales made by the sub-licensee. As an alternative, a sub-licensee may pay a lump-sum payment.

Royalties for the use of a process

If a product is manufactured using licensed IP, then it is appropriate that a royalty be paid for the use of that process.

The most common way of structuring IP royalty rates in relation to a process is to pay the royalty based on the gross sales price of the product manufactured with that process.

Lump-sum licence fees

A lump-sum licence fee is often sought at the time of granting a licence. This could be in the form of a signing fee or milestone payment.

Generally a lump-sum fee will recover the expenses of developing the IP to a point where a licence is possible. These include research and development costs, administrative and indirect costs, along with a profit component.

Signing fees

A particular type of lump-sum licence fee is a signing fee. This can reimburse the out-of-pocket commercialisation costs incurred by a licensor up to the date the licence is granted, and can include:

patent application costs and patent attorney's fees
legal fees
accountant's fees
other consultants' fees.

Milestone payments

Milestone payments are made by the licensee as certain, defined milestone events occur during the conduct of the commercialisation process by the licensor.

Examples of milestones that may trigger such payments are:

manufacturing a working prototype
manufacturing a production model
a licensee granting a sub-licence to operate in North America
the patent being granted
the first sale of a product
the making of cumulative sales of a stipulated amount.

As the commercialisation process advances through these milestones, the uncertainty of market entry reduces and the IP correspondingly becomes more valuable.