Deal Making and the Art of Creative Royalty Structures

Deal Making and the Art of Creative Royalty Structures

Deal Making and the Art of Creative Royalty Structures

A large part of successful technology licensing is remembering that one size does not fit all when it comes to structuring royalty rates. Sure, standardization can help streamline your work. But in some cases, you have to take a creative approach in order to secure the deal.

For example, one of our clients had a prospect interested in licensing a technology that was somewhat unknown in the marketplace. The price point for the technology was uncertain and likely would vary significantly over time and between buyers.

A standard structure would likely have resulted in an unfair deal for both parties at various times. At lower price points, the royalty would cut dramatically into margins, making the deal unprofitable for the licensee. At higher price points, the royalty would yield such high margins for the licensee that it would be unfair to our client.

So what to propose? A savvy prospect would have rejected a traditional royalty structure and possibly terminated negotiations. And even if the deal went through, the prospect would likely want to renegotiate—or, worse, terminate—the deal in the case of the lower price points.

A creative royalty structure was needed to account for price point uncertainties. The structure had to be fair to both parties as well as easy to implement and track.

We worked with the client to develop a creative and viable structure that met everyone’s requirements. Rather than a fixed royalty rate, we proposed a gated matrix of royalty rates based on the average sales price. Variability in the sales price (and therefore margin) was reflected in a variable royalty rate. The higher the average sales price, the higher the royalty rate.

Use of the average sales price (over the quarter, for example), eliminated the need for complex tracking and reporting. The licensee simply would divide total sales for that product for that time period by the number of units sold. The use of averaging would account for both price variability over time and between deals.

Our client’s willingness to build a creative, innovative model enabled them to move forward with this deal.

Do you have a creative royalty structure to share? We’d love to hear about it.

–By Karen Hiser

Deal Making and the Art of Creative Royalty Structures

How and When to Shut Down Technology Marketing Efforts

How and When to Shut Down Technology Marketing Efforts

There’s no time like the new year to reflect and reassess. Where are your marketing efforts working, and where are they stalled? Remember: For every hour spent on a technology going nowhere, your team could be digging for gold on a technology with higher potential!

But making the call to shut down a marketing effort isn’t easy. Even if you’ve done everything you were supposed to do in the ramp-up to marketing, sometimes you don’t getting any traction with prospects.

How do you make the tough call to cancel the effort and move on? This post gives three examples of real marketing campaigns where Fuentek advised clients to close down the marketing effort.

 

Example 1: The Fatal Flaw

Years ago, in evaluating a client’s technology, we received excellent market feedback on its key features and benefits. Industry leaders were anxious to learn more about it. So, we launched an aggressive marketing campaign. We leveraged our warm leads, made cold calls, and used social media tools.

Not long after we made contact with prospects, we began hearing the same feedback. One particular aspect of the technology was not viewed positively by the prospects. While the prospects are totally enamored of the key benefits, this one characteristic seemed to be a show-stopper.

We discussed it with the inventor, but there was no way to overcome this perceived flaw. It was inherent in how the technology worked. The fatal flaw had no work-around, and thus the technology could not deliver the benefits that had everyone so excited.

So, it was time to cut it loose.

The Bottom Line

If you are hearing consistently negative feedback, especially for the same reason, it’s time to shut the marketing effort down and move on to the next promising technology.

 

Example 2: My Baby Isn’t Ugly!

This next one is a tech transfer marketing effort that shouldn’t have launched in the first place.

A client came to Fuentek with a technology that they wanted to market. They outlined a number of (what appeared to be) compelling market benefits. In fact, they’d had great success using the technology themselves. They insisted that we kick off the marketing effort without first evaluating its market potential.

They were persuasive and, against our better judgment, we agreed.

Immediately upon contacting prospects, we began hearing consistently negative feedback. The current state of the art had far surpassed this technology. No one was interested.

Every week during our status calls with the client’s licensing manager, we recommended shutting the effort down. And every week we were told to continue making calls. They were convinced that the technology was the best thing since sliced bread.

After 2 months of us telling them that we kept getting the same feedback, the message sunk in for our client that the technology was not licensable. The client finally agreed to shut it down.

Lessons Learned

  1. Don’t market a piece of IP without first determining its market fit. Such an analysis would have quickly and inexpensively determined what the client found out the hard way—that this technology was not commercially viable.
  2. If you are marketing a technology and the feedback is consistently negative, be bold and pull the plug. And do so sooner rather than later. Move your resources on to other efforts that have a higher probability of success.

 

Example 3: A Roller Coaster Ride

This time, we did our evaluation of commercial potential. And our client’s software yielded positive feedback. In fact, that interest was great enough to warrant moving forward with marketing.

Unfortunately, our client’s resource constraints delayed the start of marketing for a significant period of time. In the meantime, the key inventors moved on to other projects. They had limited availability to support the marketing effort once it was able to start.

After launching the marketing effort, we quickly generated several viable leads. But without access to the inventors, we could not demonstrate the software or enable the prospects to test it. The leads grew cold. So we recommended that the technology continue to be passively marketed online.

Sometime after that, an unexpected national event occurred, spurring great interest in the technology. Organizations scrambled to look for solutions. And many of those solutions could be aided by our client’s technology. Suddenly, their phone was ringing off the hook, and the prospect pipeline was full again.

Unfortunately, the inventors were still unable to participate in the technology’s commercialization. And the prospects were not interested in the technology without access to the inventors.

Lesson Learned

Lack of access to the inventors is always a high hurdle to overcome. No matter how good the technology is, if you cannot bring the necessary resources to bear, shut the marketing effort down and remove the technology from your website. Otherwise, you risk damaging your credibility by taking in leads that you do not have the resources to follow through on.

 

Fuentek has helped a wide range of universities, government labs, and commercial companies with strategic and effective technology marketing campaigns. Contact us today to learn more about how we can help you.

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Revolutionary Signal Processing Algorithms Achieve Commercialization Success

Revolutionary Signal Processing Algorithms Achieve Commercialization Success

Revolutionary Signal Processing Algorithms Achieve Commercialization Success

As one of the most important discoveries in the field of applied mathematics in NASA history, HHT is a revolutionary, adaptive set of signal-analysis algorithms. This innovation had great commercialization success with multiple licenses and more than 400 Software Usage Agreements.

Fuentek’s Role

Fuentek played a major role in the successful commercialization of NASA’s HHT technology. As part of our strategic planning efforts, we developed an interactive website about HHT, including technical details written in understandable terms. This site also included an online registration system for downloading an evaluation copy of the software via a Software Usage Agreement. We strategized and led extensive marketing efforts and assisted in multiple licensing and partnership negotiations. We also wrote numerous nominations that secured multiple awards for the technology and its innovator.

Original Technology

HHT was developed at NASA in 1995 by Dr. Norden Huang as part of oceanic wave research. Unlike previous signal processing technologies, HHT provides an effective method for analyzing nonlinear and nonstationary signals while improving the accuracy of linear- and stationary-signal analysis. The award-winning technology’s first application within NASA was analysis of wing-flutter tests and the next generation of aircraft design. The technology also contributed to Shuttle mission safety by testing the tiles that insulate the Shuttle in space for the Shuttle Return to Flight Project following the Columbia accident in 2003.

Commercialization Success

HHT is broadly applicable across many industries, and it has been transferred into many industries. For example:
Structural and civil engineering research
• Submarine design and detection (U.S. Navy’s Naval Surface Warfare Center)
• Bridge-safety monitoring and engineering of highways to withstand earthquake loads (Federal Highway Administration)
• Earthquake prediction and detection research for safer structural designs (Taiwan’s National Central University)
Medicine
• Understanding how a wide variety of diseases, including avian flu, are propagated (Johns Hopkins University)
• Diagnosing sleep apnea and detecting patients with impaired blood flow regulation in the brain, a condition that may increase the risk for stroke (Harvard Medical School’s Beth Israel Deaconess Medical Center)
Wiring and Wireless
• Signal cleaning for radio frequency identification (RFID) systems (commercial company)
• Inspection, fault analysis, and diagnosis of various types of wires (commercial company)

HHT was exclusively licensed in 2008 by DynaDx.

On the Record

“I am grateful for the expertise you brought to our interactions and the commercialization efforts. You were the first tech transfer person who actually understood my algorithms technically and the value they added in the field of mathematics. It was a relief not to see your face go blank as I explained HHT. Not only that, you provided an understanding of the fields in which HHT could be used, which was essential to our success.” —HHT inventor Norden Huang in a letter to Fuentek’s Laura Schoppe on July 17, 2006

Fly Me to the Moon: NASA Moonbase Alpha Game Launches

Fly Me to the Moon: NASA Moonbase Alpha Game Launches

Fly Me to the Moon: NASA Moonbase Alpha Game Launches

Yes, you can be an astronaut based on the south pole of the moon! How? With NASA Moonbase Alpha, the first installment in NASA’s massive, multiplayer online (MMO) game. NASA released the game on Valve’s Steam network.

In the game, NASA has returned to the moon, with Moonbase Alpha as a small, self-sufficient outpost and the players assuming the exciting role of an astronaut working to further human expansion and research.

Suddenly, a meteorite cripples life support, and players must repair and replace equipment to restore oxygen production to the settlement. Team coordination along with the proper use and allocation of available resources—including player-controlled robots, rovers, repair tools, etc.—are key to players’ overall success. There are several ways in which you can successfully restore the life support system of the lunar base, but since you are scored on the time spent to complete the task, you have to work effectively as a team, learn from decisions made in previous gaming sessions, and make intelligent decisions in order to top the leaderboards.

The game won top honors in a serious gaming challenge held Nov. 29-Dec. 2, 2010 at the annual Interservice/Industry Training, Simulation and Education Conference in Orlando, Florida.

Developed in partnership with Virtual Heroes, Project Whitecard Inc., and Army Game Studio, Moonbase Alpha is part of NASA’s “Astronaut: Moon, Mars, and Beyond” MMO, a game that is not only fun but also inspires kids’ interest in STEM – science, technology, engineering, and math.

We at Fuentek are particularly pleased with this game launch, because it is the culmination of a lot of hard work in developing the partnership as part of our work for the agency’s technology transfer program. When NASA began its search for partners in the gaming industry, Fuentek developed print and online materials to promote the partnership opportunity. We also provided pre-, during-, and post-event support for the April 2008 MMO Workshop, which included more than 130 attendees vying to participate in the project.

Fuentek’s efforts helped lead to a joint Space Act Agreement with the three partners. Additionally, Fuentek introduced Virtual Heroes, the lead company in the partnership, to NASA.

Download Moonbase Alpha for free and start your adventure today!

Deal Making and the Art of Creative Royalty Structures

Company Licenses NASA Technology for Battery-Free Solar Powered Refrigeration Systems

Company Licenses NASA Technology for Battery-Free Solar Powered Refrigeration Systems

SunDanzer Refrigeration Inc. has obtained a non-exclusive license from NASA to patented battery-free solar powered refrigeration systems technology. Originally developed by innovators at NASA’s Johnson Space Center who were investigating solar alternatives for cooling lunar bases, the technology can be used for a variety of purposes, including off-grid, battery-free refrigeration for food and drinks, air conditioning systems in remote locations such as field hospitals, and refrigeration of milk tankers and other transportation vehicles. SunDanzer is already using the technology to develop a battery-free solar powered refrigerator for storing vaccines and a refrigerated container for transporting food and beverages to remote military personnel.

Fuentek’s Role

Fuentek assessed the technology, recommending that NASA proceed with a targeted marketing campaign to help ensure that potentially significant humanitarian benefits be achieved. Then, leveraging the assessment research, we assembled a vetted list of high-potential industry prospects and prepared a Web page of marketing collateral. Fuentek’s marketing campaign involved e-mails, phone calls, blogging, and follow-up on NASA’s lead recommendations. Fuentek and NASA personnel collaborated on qualifying and guiding prospects through the licensing process.

Note: SunDanzer is just one of two licensees to date. The other will be working to integrate NASA’s technology into new green-energy products. These small-business licensees benefitted from the mentoring provided by Fuentek, and our collaborative approach to license negotiations helped secure win-win deals for NASA and the licensees.

Benefits of Technology Transfer

  • Addresses an unmet need: Provides an alternate source of refrigeration for more than two billion people in the world whom the World Health Organization (WHO) estimates are without access to electricity
  • Costs less to use: Uses no batteries and is simple, easy to use, and efficient; has low initial and ongoing operating costs; and is location independent, making it an excellent source of off-grid refrigeration
  • Helps the environment: Offers a clean alternative to off-grid refrigerators that use gasoline-powered generators or batteries, which have a limited life span and lead to waste
  • Accommodates small and large storage needs: Transfers easily to small- and large-volume applications and can be mass produced to meet a large demand

On the Record

“The WHO estimates that nearly two billion people in the world are without access to electricity that is essential for storage of vaccines and medicine. The battery-free solar refrigeration technology has the potential to greatly reduce the cost and increase the availability of vaccines delivered to the poorest, neediest people in remote regions around the world.” — David Bergeron, CEO, SunDanzer

“SunDanzer has the experience in manufacturing and marketing solar refrigerators, and this license will help them to quickly address an unmet need for low-cost, battery-free solar powered vaccine refrigerators. This is an excellent opportunity to use NASA technology to create a product that will help millions of people in undeveloped areas around the world.” — Michelle Lewis, Patent License Manager, NASA’s Johnson Space Center

About SunDanzer Refrigeration Inc.

Founded in 1999 as Solus Refrigeration, Inc., SunDanzer builds cost-effective solar refrigerators that are optimized for off-grid or net-zero energy customers. Founded by David Bergeron, former leader of NASA’s Advanced Refrigeration Technology Team, the company has been at the forefront of solar applications technology and is a leading supplier of refrigerator systems optimized for solar applications. Bergeron was the co-inventor of the original Johnson Space Center technology, which SunDanzer used to produce one of the world’s first practical battery-free refrigerators.

About the Technology

The patented technology was originally developed by NASA’s Johnson Space Center innovators, Bergeron and Michael Ewert, who were investigating the use of a photovoltaic (PV) solar heat pump for cooling lunar bases. They subsequently modified the technology and developed a refrigerator with a vapor compression (battery-free) heat pump that directly converts electricity from solar PV panels into thermal energy that is stored internally using a simple, low-cost, phase-change material.

The battery-free solar powered refrigerator technology can be used for a variety of purposes, including off-grid refrigeration for food and drinks, air conditioning systems in remote locations such as field hospitals, and refrigeration of milk tankers and other transportation vehicles. NASA received three patents for this system.

Addressing a Need through Technology Transfer

On January 13, 2010, NASA and SunDanzer signed a non-exclusive license to the patented solar powered refrigeration systems technology developed by Johnson Space Center. SunDanzer plans to use the technology to develop and market one of the first battery-free solar powered refrigerators suitable for safely storing vaccines. The company has also signed an agreement with the U.S. Army to develop a prototype for a refrigerated container for shipping food to U.S. Army personnel.

SunDanzer is currently working to obtain prequalification for its vaccine refrigerator under the Performance, Quality, and Safety immunization standards that were adopted in 2007 by the WHO.

The company is currently making changes to the unit’s design prior to submitting it for third-party testing, a key step for the company to obtain WHO prequalification. If approved by the WHO, the unit would be one of the first to meet the new standards, a designation that is important to aid organizations, governments, and other entities that are the most likely purchasers of the solar powered vaccine refrigerator.

SunDanzer also signed a nine-month contract with the Army in February of 2010 to build a prototype of a battery-free solar powered refrigerated shipping container (20 feet by 8.5 feet by 8 feet) for transporting fruit, vegetables, and other perishable food to troops in remote locations. The company will take the technology used in its 3 cubic foot vaccine refrigerator to a larger scale in an attempt to provide the Army with a cost-effective alternative to refrigerated shipping containers that currently are powered by diesel generators.