Your source for expert commentary on IP management issues.
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Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
The licensing contract and relationship is the most common channel through which both technologies and
the rights to develop and sell products are transferred between entities. This section provides detailed
explanations of both the strategies and the mechanics of successful licensing.
Key Implications and Best Practices: Section 11
Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.
- Ideally, you will leave detailed aspects of negotiations, such as collaboration or license agreements, to the relevant offices of your institutions. However, do participate in the internal discussions prior to in- or out-licensing negotiations. Your input will be important and should be valued.
- The dual goals of economic growth and social/humanitarian benefits through licensing are not mutually exclusive. Indeed, they are often complementary. Much will depend on a sound institutional licensing strategy and on good relationships with licensees. Your role in the latter may be critical.
- Make an effort to consistently document the origin of biological and other materials you use in your research, and keep a comprehensive record. Although it is not your responsibility to resolve IP conflicts, your detailed records will help if such a conflict arises.
- Interface with the technology transfer office (TTO) in order to understand options and whether you might have a role in their implementation or fulfillment. Although options are complex and a matter most appropriately addressed by your TTO officers, the granting of options may significantly impact your research options. Make sure you discuss the implications with them prior to the incorporation of options in licenses that relate to your research.
- When you disclose an invention to your TTO officers, inform them of any ideas you may have on the various fields of endeavor in which your invention could find applicability. This will help the TTO write better patent applications and, later to draw up license agreements for many different players under different field-of-use licenses. This approach can maximize the value of your research and may accelerate commercial and humanitarian development of technologies based on your research.
- Your role in field-of-use licensing is essential. You can provide your TTO with valuable information on licensable components for different applications and entities.
- The products arising from your program’s research efforts, particularly from product development activities, will invariably embody numerous technologies, including components and processes that might have IP rights from third parties attached to the technologies. This can create complex IP management and licensing issues as these products approach commercialization. If you are engaged in product development, maintain a good line of communication with your TTO and ensure that early on they address IP ownership by third parties.
by Sandra L. Shotwell
In-Licensing Strategies by Public-Sector Institutions in Developing Countries
by Kanikaram Satyanarayana
Licensing Biotechnology Inventions
by John W. Freeman
Trade Secrets and Trade-Secret Licensing
by Karl F. Jorda