Proactive management of intellectual property (IP) is essential for your R&D organization, regardless of whether it’s a university, private company, government lab, hospital, or not-for-profit research organization. Being proactive helps you focus on achieving your goals rather than reactively putting out fires, and it enables more efficient and effective operations. To make your TTO or other IP operation more proactive, consider the following recommendations and guidance.
Whether you want to improve your own business or introduce a new product or service line, technology/innovation is usually a major part of the solution. With all of the R&D at universities and government labs, it’s not always necessary to start from scratch to create that new solution or improvement. In fact, it’s best to always start by looking outside your company using open innovation—or better yet, Symbiotic Innovation—tactics.
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…
The 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.
What’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.
Understanding 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.)
I 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.
You may have noticed that several universities and government labs are forming ready-to-sign patent licensing programs or other initiatives with new licensing terms. Many of these programs target startup companies, like the University of North Carolina’s Express License program or the DOE’s America’s Next Top Energy Innovator Challenge program, which offers startups options to license patents for $1K.
Interesting news in the world of technology licensing: the Department of Energy recently announced ‘America’s Next Top Energy Innovator Challenge’—a licensing program offering special terms to startup companies on a set of patent licenses from national …
Thoughts on the Quick Deal versus the Strategic Play… Or, When the Bird in the Hand Is NOT Worth Two in the Bush
I’ve been thinking recently about deals. Well, obviously, we’re almost always thinking about deals! But specifically, I’ve been thinking about those deals that seem to fall into your lap. The bird-in-the-hand deals certainly can save time and marketing resources. And sometimes they make sense given the specifics of the technology, as we’ve blogged about previously. But sometimes the quick deal that seems to make sense at first blush is not the way to go.