Your source for expert commentary on IP management issues.
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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 technology transfer manager this is the core skill set of which mastery can set you apart
from your peers.
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.
- One of your responsibilities will be to bring together individuals with different backgrounds and experiences before negotiating agreements. Ideally, a team should include business strategy, marketing, legal, scientific, regulatory, production, and finance expertise.
- Marketing inventions should not simply be a push of technologies; rather, it should be an approach that allows the needs of buyers to pull inventions.
- Marketing is not merely advertising or selling but a multistage process that addresses the who, what, why, where and when of an invention.
- Marketing inventions should use a systematic approach (which is fundamentally different from product marketing). Particularly useful are portfolio approaches to marketing (also called integrated intellectual property management which blends sophisticated IP data search-and-analysis techniques with continuous product improvement).
- Public sector institutions should pay particular attention to the following terms or aspects of a license when negotiating with companies: exclusive versus nonexclusive; enabling technologies versus traits versus plant materials; rights granted to the licensee (covering topics such as sole licenses, coexclusive licenses, territoriality, duration, field of use, and retained rights issues, as well as options or rights of first refusal, and favored-nation clauses); grant-back clauses; compensation due to the licensor; liability, diligence terms, and milestones; licensee’s responsibilities vis-à-vis the patent; license term and termination; and issues of assignability.
- Some people believe that licensors should stay away from conditions on final product price because of its complexity; this is one reason why the public sector needs to develop its skills.
- You can help ensure that a licensee will fulfill the terms of the agreement if you require milestone payments or certain reporting conditions when milestones are reached, minimum annual royalties, or research funding-level commitments. It is particularly important to ensure diligence for exclusive licenses.
- There are three key ways that a license grant, either nonexclusive or exclusive, can be limited or defined: territorial limitations, field-of-use limitations, and limits on duration.
- Conduct comprehensive IP audits to determine where your IP assets are, when IP protection is needed, whether there are potential IP liability issues, whether there are licensing needs or opportunities, and whether there are inventions to be harvested.
- The key implications and best practices listed for senior management are also pertinent for TTO officers.
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
Patent Licensing for Small Agricultural Biotechnology Companies
by Clinton H. Neagley
Product Development and IP Strategies for Global Health Product Development Partnerships
by Sandra L. Shotwell
by Robert S. Macwright, John F. Ritter