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ipHandbook Blog

Your source for expert commentary on IP management issues.
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About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

Dealmaking and Marketing Technology to Product-Development Partners
Topic Guide for Senior Administrators

Why This Topic Is Important

The processes of market discovery and market formation often occur simultaneously for early stage technologies, which presents great challenges for those seeking to license them. This section discusses the nature of market opportunities for new technologies and how technology transfer can best approach them. For the senior administrator, an awareness of these marketing functions of technology transfer will help you to understand what is necessary to get the regional economy to take up your institution’s technologies.

Key Implications and Best Practices: Section 12

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.

  • For private sector companies, the ultimate purpose of IP management is to enhance competitiveness and reduce risk. For public sector institutions, the ultimate purpose of IP management is to serve the greater public interest. These are not mutually exclusive goals, and they can be reconciled through sound technology marketing and licensing practices.
  • The four characteristics of an alliance that generally define the allocation of value between an originator and a commercial partner are (1) its stage of development, (2) the role retained by the licensor in product supply or other ongoing activities, (3) the size of the market opportunity, and (4) the scope of the market granted to the development partner under the alliance agreement.
  • The key to successful negotiation is having a clear understanding of the value each party brings to a relationship. Value may be objective and quantitative, or of a more qualitative nature.
  • Perhaps the most important element in a negotiation is clear communication—also internally—with the negotiating partner about the benefits that will or could be obtained through a license agreement.
  • In general, the public sector organization should consider offering the first draft of an agreement to cover a number of topics of particular concern to public sector organizations that would probably not be addressed by a company.
  • Negotiating between public and private sectors ought not be confrontational and should be seen as an opportunity to forge a long-lasting and mutually beneficial relationship. Put differently, negotiating a fair licensing agreement should not be seen just as a process of “bargaining” toward a win-win outcome.
  • For the private sector party, a well-tested and successful approach to negotiating an agreement is to offer initial terms that the public sector organization would be willing to agree to if it were on the other side of the negotiating table.
  • Specific best practices and terms that allow public sector entities to meet public sector goals (ensuring broad access to innovation) include area of use, territory, price, labeling, white-knight conditions, and royalties.
  • Senior management can set a positive tone for negotiation that will ensure that deals made with others are a vehicle for building strong relations and trust between parties.
  • Integrated IP management (IPM) considers the critical role of IP management throughout the entire innovation life cycle. IPM allows managers to intervene, change course, amend or enhance patent applications, and in-license useful patents or technologies.
  • Networking is important, if not essential, for successful technology marketing. Technology transfer officers and scientists particularly should be encouraged to network.

Recommended Chapters       Show All AbstractsShow All Abstracts

Show AbstractAbstract Biotechnology and Pharmaceutical Commercialization Alliances: Their Structure and Implications for University Technology Transfer Offices
by Mark G. Edwards

Show AbstractAbstract Business Partnerships in Agriculture and Biotechnology that Advance Early-State Technology
by Martha Dunn, Brett Lund, Eric Barbour

Show AbstractAbstract An Introduction to Marketing Early-Stage Technologies
by Marcel D. Mongeon

Show AbstractAbstract IP Portfolio Management: Negotiating the Information Labyrinth
by Jeremy Burdon

Show AbstractAbstract The IP Sales Process
by Todd S. Keiller

Show AbstractAbstract Negotiating an Agreement: Skills, Tactics, and Best Practices
by Richard T. Mahoney

Show AbstractAbstract Product Development and IP Strategies for Global Health Product Development Partnerships
by Sandra L. Shotwell