Your source for expert commentary on IP management issues.
Go to the blog
Editor-in-Chief, Anatole Krattiger
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
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.
Biotechnology and Pharmaceutical Commercialization Alliances: Their Structure and Implications for University Technology Transfer Offices
by Mark G. Edwards
Business Partnerships in Agriculture and Biotechnology that Advance Early-State Technology
by Martha Dunn, Brett Lund, Eric Barbour
An Introduction to Marketing Early-Stage Technologies
by Marcel D. Mongeon
IP Portfolio Management: Negotiating the Information Labyrinth
by Jeremy Burdon
The IP Sales Process
by Todd S. Keiller
Negotiating an Agreement: Skills, Tactics, and Best Practices
by Richard T. Mahoney
Product Development and IP Strategies for Global Health Product Development Partnerships
by Sandra L. Shotwell