Choate Talks about Launching Irish Companies in the US

John A. Meltaus and Larry Naughton from Choate Partners in the US gave a talk to the PDC this morning around the challenges facing Irish companies that are planning to expand into the North American market. John has particular experience in this area as he acted for Iona for many years (both pre and post IPO). Choate were also involved in the recent sale of Similarity Systems.
John made many good points in a long and free ranging presentation (made without notes or visual aids!) about the topic. What follows is a precis of some of the key points he made.

  • Do you want to be a 5 million, 20 million, 200 million or 2 billion dollar company. Because that decision governs how you plan funding and expansion and whether your company will be sprinting or running a marathon.
  • The primary exit strategy for Irish companies is a trade sale
  • The typical tier 1 US VC has a fund size that cannot sustain typical Irish VC invesments of say €2 millon. For example Polaris Ventures fund is US$ 1 billon. Its just not economic for them to invest less than US$10 millon (and that’s just series A).
  • Your business plan must encompass the economic demands of principals, investors (VCs), customers, partners and employees.
  • Key mistakes for Irish companies launching in the US
  • Starting too late in building a US presence
  • Making the wrong first hire (The wrong first hire is General Manager, the right first hire is an SVP of Sales)
  • Not having a patent strategy (Now this guys are patent lawyers, so they would say that :-))
  • Not cultivating the competition
  • Think about exit strategies too late

If you plan to raise US VC expect the VCs to put pressure on the company to relocate its headquarters there or at least have one of the principals move there. (As he put it, several VCs won’t invest unless they can drive to the CEO’s house)

  • US employees are hired “at will” e.g. They can be hired and fired at will. Take care not to accidentally offer contract terms in an offer letter or other hiring documentation (particularily options paperwork)
  • Patents
    • Make sure patents are linked to business value
    • Expect to spend at least €10,000 on a complete patent application (I have heard up to €20,000 may be required in some cases)
    • A provisional patent application will cost around $2000 and will give you protection while doing a full filing (e.g. if you want to disclose the patent as part of a product launch)
    • In the US you have a one year grace period from the time of invention before filing the patent ( My comment: in Europe you must file prior to disclosure)
  • How to mess up your trade sale
    • Ignore your patent portfolio (fail to file any patents)
    • Sign contracts that expose you to patent claims from other companies
    • Have accelerated options that can be exercised on a sale or exit event (How can you sell an company if everybody gets to bail out on the back of the sale?)
    • Exclusivity Contracts (with customers, partners), whereby they get first dibs on any sale event
    • Assignment of IP, have all the respective patent/IP owners assigned their rights to the company
    • Internal Controls, have you got audited accounts, all the relevant employment and customer contacts filed etc,
  • Irish companies have an edge on their US competitors in that they are built from day one to serve export markets
  • VCs look for three things
  • A Large end user market
  • Proprietary (e.g. defensible) Technology
  • A great management team
  • A very entertaining talk in all with much more going on that could be captured in the brief notes above. John is around town for the next few days so if you get an opportunity to bump into him, I’d take it…

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