Tag Archives: Licensing-Best Practices

Negotiating a License? Consider the Different Faces of Value for Tech Transfer

When thinking about the value of a licensing agreement, it’s easy to focus on the financial terms, such as up-front payments and royalty rates. However, licensing revenue isn’t the only area to negotiate financial terms. And in many cases, non-financial terms can have significant value. Financial terms beyond licensing revenue are pretty straightforward to negotiate. For a university… Continue reading

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Help for Industry: Collaborating with Universities and Government Labs

One Plus 1 is More Than TwoFor technology-based companies, universities and government labs are a great resource for reducing the risk, cost, and time to market for new products. Not only have they extensive capabilities, expertise, and intellectual property (IP) portfolios, but they also have a growing interest in collaborating with industry. Companies wanting to pursue partnerships with university/government labs now have a new resource to consult for how-to advice. Continue reading

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License Negotiation Forget-Me-Nots for Technology Transfer Offices

StringOnFinger_iStock_000021963522_lowrezThe past few months have seen several of us at Fuentek supporting multiple clients with negotiating licenses for their technologies. One project that I’ve been helping a client with embodies several best practices of license negotiations. Ironically, these concepts are so essential… that they’re sometimes forgotten. So here is a list we’ve put together to ensure that the most important aspects of license negotiations stay front and center. Continue reading

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How-To Tips for Corporate Licensing Officers Looking for University/Government Technologies

Laura Schoppe's article "Cutting-Edge Tech: A How-To Guide for Corporate Licensing Officers" appeared in issue 67 of IAM magazineUniversities and government labs — especially in the United States — are keen to transfer technologies into commercial ventures. It can be tough, but not impossible, for corporates to engage with those organisations and find those innovations. So begins an article I was asked to write for Intellectual Asset Management (IAM) magazine. Entitled “Cutting-Edge Tech: A How-To Guide for Corporate Licensing Officers,” this article is now available for downloading from our In-Depth Insights page. Thanks, IAM, for granting reprint permission.Continue reading

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Tech Transfer Deal Valuation: Negotiating a Reasonable Royalty Rate

Win-Win-Notes_iStock_000016549417SmallWhat’s a reasonable royalty rate when licensing a technology? Good question! Those of you with years of experience negotiating licensing or other technology transfer agreements know that there are many approaches for determining the value of a potential deal and therefore what the royalty rate should be. Which method is best? When we provide deal-making support to our clients, Fuentek uses a combination of three deal valuation techniques: market assessments, cost assessments, and income evaluations. Let’s consider each element. Continue reading

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Working the Negotiating Table to Your Advantage: A Free Webcast

Valuation-webcast-Why-prepare-iconUnderstanding how prospects perceive value will help you gauge their true interest in a potential licensing deal. Just because you’ve designed a cool widget doesn’t mean somebody out there is willing to invest in commercializing it. Potential licensees will be interested only if the technology delivers meaningful value for their company. For the best results, licensing managers should be able to identify the key factors that influence prospects’ decision-making processes — a good bit of which is already on hand if a market-based assessment of the technology was conducted. There’s no substitute for being prepared as you head into negotiations. I explain further in our new “Why Prepare for Licensing Negotiations” webcast, which also includes tips for the kind of research you should conduct in advance. (The webcast is free — all you have to do is register.) Continue reading

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AUTM Annual Meeting: 6 Networking Tips for Industry and TTOs

Preparation ChecklistThanks to the proactive efforts by AUTM® the past few years, the national meeting will have significant industry representation, including key new participants from outside the life sciences such as Samsung and Raytheon. This provides an ideal opportunity for university technology transfer offices (TTOs) and high-tech companies to lay the groundwork for establishing mutually beneficial collaborations and licenses. To make the most of your time at the AUTM meeting, I recommend taking these six actions right away. Continue reading

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Streamlined/Low-Cost Licensing: Making Sure Faster and Cheaper Are Better

Sealing the deal with time to spareI read with interest two recent news stories about technology transfer offices (TTOs) looking to increase licensing deals by addressing two oft-cited barriers: high costs and long negotiation times. The logic: Offering intellectual property (IP) at a super low cost (or even for free) and/or through non-negotiation, ready-to-sign license agreements will result in more technologies getting to market faster. These types of programs have been around for a bit (see my prior posts about free IP and ready-to-sign licenses) and the trend seems to be growing. So let’s look at the two recent examples and consider how to make these types of programs successful. Continue reading

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Prototyping Licenses: Another Angle on Evaluation Licenses for Technology Transfer

Prototyping-LautDesignA few months ago, the IP Marketing Blog discussed the OpenUlster program at the University of Ulster in Ireland and its evaluation license. It caught my attention for its efforts to streamline licensing and help mitigate the risks that potential licensees may feel when contemplating a new technology. Here’s how the blogger described it: ‘To take out an evaluation license, which costs just one Pound, the visitor just clicks on the link to download the documents, fill out two forms and return them both to Ulster. “When the license is countersigned by one of our commercialization team, the firm has exclusivity to evaluate that technology,” says [technology commercialization manager Dr. John] MacRae… At the end of the evaluation period… the evaluation license can be converted into a full commercial license.”’ Continue reading

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Bringing Universities and Corporations to SRA Negotiations with a Letter of Intent

Recent experience with a Sponsored Research Agreement (SRA) has underscored the potential miscommunication that often keeps universities and corporations from peacefully coming to successful negotiations. So, I’d like to take some time to weed through what each party can (and cannot do) and why, in an effort to clear up some misconceptions and potential frustrations. Continue reading

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