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.
- 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.
Commercialization Agreements: Practical Guidelines in Dealing with Options
by Mark Anderson, Simon Keevey-Kothari
by Sandra L. Shotwell
In-Licensing Strategies by Public-Sector Institutions in Developing Countries
by Kanikaram Satyanarayana
Licensing Biotechnology Inventions
by John W. Freeman
Problems with Royalty Rates, Royalty Stacking, and Royalty Packing Issues
by Keith J. Jones, Michael E. Whitham, Philana S. Handler
Trade Secrets and Trade-Secret Licensing
by Karl F. Jorda
Use of Trademarks in a Plant-Licensing Program
by William T. Tucker, Gavin S. Ross