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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.
- Licensing is highly context-specific. For this reason, blanket policies on minimum requirements for licensing terms applicable to your technology transfer office can be counterproductive to making sound deals and can reduce the potential to forge international linkages.
- Public sector institutions should, as a matter of policy, consider the routine incorporation of philanthropic-use provisions in their licenses and should, as a matter of routine, always retain research and teaching rights to any of their inventions.
- 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.
- The value of trademarks for both varieties and products, from developed and developing countries alike, cannot be understated. To benefit from trademarking strategies, particularly of global reach, the maintenance of high quality standards is important, since they provide the consumer with information on the source of the products. In addition, using trademarks as a strategy allows public and private sector institutions alike to capture more of any added value.
- Licensing is about choices, and it can be argued that no choice is more important than the field of use granted in a license. A public sector institution should have a clear policy statement on how it deals with field-of-use licensing and may even wish to consider making field-of-use licenses the preferred method of licensing. This is especially applicable to platform technologies and diagnostics. However, field-of-use licensing requires more work. A well-trained and well-staffed technology transfer office will be essential.
- A public sector institution can contribute significantly to its mission through in-licensing intellectual property from private sector entities. For this, it is useful to develop a set of strategies (business, marketing, partnership building, and legal) during discussions with the licensing office that balance the needs of the public sector with the needs of the private sector.
- Business decisions, more than legal aspects, should determine licensing terms. Nevertheless, lawyers should ensure that the contracts comply with prevailing law. This is equally applicable to private sector and public sector deals.
- Patent licenses are most valuable when coupled with access to associated know-how. Comprehensive staff training in the handling of confidential information from third parties is therefore critical.
- But public sector organizations should exercise caution when accepting trade secrets (as opposed to confidential information). In some jurisdictions there may be significant liability obligations related to trade secrets, and public sector institutions may not be in a position to cope with all such obligations.
 Abstract
Commercialization Agreements: Practical Guidelines in Dealing with Options
by Mark Anderson, Simon Keevey-Kothari
Abstract:
An option to acquire rights in university intellectual property (IP) may be encountered in several guises: as a stand-alone agreement, as a clause within an agreement (for example, a sponsored research agreement or a material transfer agreement), or as a “pipeline,” or IP framework, agreement for a university spinout company. Although the grant of an option may often form quite a small part of a larger agreement, the grant can raise important issues in terms of an organization’s IP commercialization strategy. This is especially true of pipeline agreements that are, effectively, a specialized form of option agreement. The purpose of this chapter is threefold:
- to provide an introduction to options, and their uses, and including legal, practical, and negotiating issues
- to provide suggested templates along with guidelines concerning completion of the templates
- to consider and discuss some of issues that are problematic or of particular concern to universities.
The chapter attempts to provide information that is useful for both the beginner and the experienced research-contracts or technology transfer professional. The breadth of material covered may give the mistaken impression that university contracts are wrought with legal and commercial difficulties. Usually, this is not the case. But sometimes differences of expectation, practice, or legal culture can arise between parties negotiating an agreement, particularly in international transactions.
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
Problems with Royalty Rates, Royalty Stacking, and Royalty Packing Issues
by Keith J. Jones, Michael E. Whitham, Philana S. Handler
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.
Abstract
Use of Trademarks in a Plant-Licensing Program
by William T. Tucker, Gavin S. Ross
Abstract:
The principal forms of IP rights protection for plant varieties are plant patents, plant variety protection patents (PVPs), and utility patents. However, trademarks can also provide long-lasting and significant protection for plant varieties. One advantage that trademarks have over the statutory forms of IP protection for plants (plant patents, PVPs, utility patents) is that trademarks can be protected indefinitely, as long as the product is marketed and the trademark enforced. The most important agreements dealing with international trademark registration are the Madrid system and the Madrid Protocol (of which the United States is a signatory). Licensing of a trademark can either stand alone or be combined with another form of IP rights protection, such as with a hybrid PVP/trademark license.
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