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About
Editor-in-Chief, Anatole Krattiger
Editorial Board
Concept Foundation
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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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.
 Abstract
Field-of-Use Licensing
by Sandra L. Shotwell
Abstract:
Field-of-use licensing provides the licensor with greater control over the use of its intellectual property, while maximizing the use and value of the technology. In order to maximize the use of a given technology, managers will have some additional work to do as they identify, negotiate with, and manage more than one licensee. Special issues related to multiple licensees in distinct or overlapping fields will have to be handled with forethought and a balancing of interests. When is field-of-use licensing worth the extra effort? When more than one company is needed to fully develop a technology’s potential, when different licensees are needed to address different markets, or when field-of-use licensing has the potential to significantly increase the financial return from a technology. In all of these situations, field-of-use licensing can produce better results for everyone involved.
Abstract
In-Licensing Strategies by Public-Sector Institutions in Developing Countries
by Kanikaram Satyanarayana
Abstract:
In the past, it was possible for some countries to ignore IP (intellectual property) management while pursuing economic development and improved public health. Globalization, however, has brought the world closer and closer together, and with the advent of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), no country can afford to be isolated from the global IP system. This chapter explains how developing countries can use this new system to their advantage through in-licensing technologies (that is, bringing technology into the public sector through patent license agreements). Offering an overview of the usual requirements of a license agreement, the chapter also considers issues that are uniquely relevant to public-sector institutions in developing countries as they negotiate such licenses.
Abstract
Licensing Biotechnology Inventions
by John W. Freeman
Abstract:
After providing an overview of licensing in the field of biotechnology, the chapter carefully examines the key components of a license agreement, particularly in relation to the field’s unique concerns. The chapter raises a number of issues that licensors and licensees should consider when negotiating patent license agreements. It offers precise definitions of key terms, points out areas of the agreement that merit special attention (including the relative merits of exclusive and nonexclusive licensing), considers the difficult question of how to determine a patent’s value (especially when the patent is being used for screening purposes), and gives much-needed attention to the complexities of confidentiality agreements, especially those involving academic research institutions. To make negotiations easier and more realistic, the incentives for licensors and licensees are discussed, as are some of the finer points of development collaboration. In addition, the author offers some advice about how to define patent misuse, offering some helpful suggestions about what to do should things go bad. The goal of this chapter, however, is to ensure that agreements succeed.
Abstract
Trade Secrets and Trade-Secret Licensing
by Karl F. Jorda
Abstract:
Exploiting the overlap between intellectual property (IP) categories, especially between patents and trade secrets, is an important facet of IP management. Patents (which require full disclosure) and trade secrets (which are kept confidential) are not incompatible. On the contrary, they can complement one another: patents protect inventions and trade secrets protect collateral know-how. Using patent and trade-secret protection together in a synergistic manner results in a potent exclusivity. Moreover, as licensing has become the preferred instrument for technology transfer, most technology licenses are hybrids, covering both patents and trade secrets. This situation has evolved because licenses that cover patents but do not allow access to collateral know-how usually do not permit patented technology to become commercialized. Despite the ease of obtaining trade-secret protection—immediate efficacy and low cost—this type of IP protection is too often neglected.
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