Technology Management: Developing And Implementing Effective Licensing Programs

A step-by-step guide to licensing technology-based intellectual property assets

For many modern, high-technology companies, licensing their technology-based intellectual property assets is the best way to fully exploit them. Firms that are unable to utilize their proprietary technology assets can license them to other companies more capable of doing so. This book serves as an informed and comprehensive guide to developing a technology licensing program and the legal hurdles, operational needs, and strategies involved.

Suitable for companies seeking to implement or redesign a technology licensing program, as well as individual inventors who want to protect and profit from their proprietary technology, Technology Management covers all the bases.

Learn to:
* Develop a licensing strategy
* Conduct proper valuations of intellectual property
* Gather and utilize market research
* Market your technology
* Negotiate and draft licensing agreements


Utilize these handy resources:
* Glossary of important terminology
* Case studies and sample documents
* Lists of organizations, publications, trade shows, and other helpful sources of information

ROBERT C. MEGANTZ holds a BS degree in electrical engineering from Cornell University and is an Adjunct Lecturer at the Leavey School of Business at Santa Clara University, where he teaches a course on technology licensing. He works as a licensing and business development consultant.

Preface.

Acknowledgments.

1 To License or Not to License . . .

Alternative Approaches.

New Venture.

Acquisition.

Joint Venture.

Licensing.

Strategic Alliance.

Sale.

Technology Management Strategies.

Types of Licensing.

Licensing-Out.

Licensing-In.

What to Do after Deciding to License.

Financial Considerations.

2 Intellectual Property.

Patents.

Background.

Requirements for Patenting.

Factors in Determining Whether to Patent.

Patent Marking.

Trademarks.

Background.

Using Trademarks in Technology Licensing.

Trademark Development.

Trademark Protection.

Copyrights.

Background.

Protecting Copyright.

Know-How.

Background.

Protecting Know-How.

Mask Works.

Background.

Protecting Mask Works.

Intellectual Property Management.

Goals.

Auditing Intellectual Property.

Developing an IP Strategy.

Patents.

Trademarks.

Copyrighted Works.

Mask Works.

Proprietary Know-How.

IP Maintenance.

3 Researching the Market.

Information Needed.

General Information.

Companies and Products in the Market.

Technologies Available.

Licensing Practices.

Sources of Information.

Internal.

Targeted Companies.

Online and Subscription Services.

Trade Publications.

Trade Associations and Shows.

Patent Searches.

Universities.

Government Agencies.

Licensing Programs.

Preparing the Data.

Organizing the Raw Data.

Documentation.

Synopses.

Uses for Market Information.

Market Overview.

Revenue Projections.

Strategy Development.

Internal and External Contacts.

Determining Value.

4 Technology Valuation.

Sharing Profits.

Cost-Based Valuation.

Example.

Market-Based Valuation.

The 3% to 5% Rule.

Industry Standards.

All Industries.

Computing.

Biotechnology.

Automotive.

Health Care.

Consumer Electronics.

Auction.

Example.

Economic Analysis.

Example.

Using Discounted Cash Flow to Calculate Net Present Value.

Net Revenue Amounts.

Timing of Payments.

Risk.

Net Present Value Calculation.

Example.

5 Licensing Strategies.

Developing a Licensing Strategy.

Strategic Fit.

Revenues.

Financial Terms.

Improvements and Continuity.

Strategy Considerations.

Exclusivity.

Cross-Licensing.

Additional Licenses Required.

Market and Territorial Restrictions.

Other Restrictions.

Future Developments.

Technical Assistance.

Royalties.

Sublicensing.

Warranties, Indemnification, and Liability.

Anti-trust/Restraint of Trade.

Taxes.

Licensing from Universities.

Background.

Characteristics of University Licensing.

Licensing from the U.S. Government

Advanced Techniques Corporate Licensing.

Benefits.

Types of Products.

Implementing a Corporate Licensing Program.

6 Technology Marketing.

Factors Affecting Marketability.

Economic Viability.

Utility.

Stage of Development.

Proven Performance.

Understanding the Market.

Developing a Marketing Strategy.

Targeting Prospective Partners.

Defining the Process.

Contacting the Targeted Licensee.

Use of a Non-Disclosure Agreement (NDA).

Exploratory Meeting.

Unsolicited Inquiries.

Public Relations.

Trade Shows.

Publications and Trade Organizations.

Other.

7 Negotiating and Drafting Agreements.

Negotiation in the 21st Century.

Negotiation Concepts.

Drafting Agreements.

Use of a Memorandum of Understanding.

Agreement Structure.

Cover Page and Table of Contents.

Recitals.

Definitions.

License Grant.

Payments.

Other Obligations.

Termination.

Warranties, Indemnification, Liability, and Authority.

Miscellaneous Provisions.

Licensing Computer Software.

Background.

Current Licensing Practices.

The Open-Source License Model.

Future Trends.

Dealing with Infringers.

Determining Infringement.

Patents.

Copyrights.

Trademarks.

Do Nothing.

Escalating Actions.

High-Level Response.

Defensive Licensing.

Selling Infringed Patents.

Advanced Licensing Techniques Hybrid versus Separate Licenses.

Hybrid Agreements.

Separate Agreements.

Separate Agreement Models.

Conclusion.

8 Post-Agreement Activities.

By Licensor.

Deliverables.

Agreement Maintenance.

IP Maintenance.

Trademark Quality Control.

By Licensee.

Payments.

Other Obligations.

Royalty Auditing.

Why Audit?

Audit Timing and Frequency.

The Audit Process.

Problems Found in Audits.

Summary of Audit Principles.

Leveraging License Agreements.

The Licensing Organization.

Management.

Administration.

Technical Services.

Marketing.

Legal Counsel.

Local Liaison Offices.

Advantages of Forming a Licensing Organization.

Appendix A Case Studies.

Consumer Electronics Industry Case Studies.

Licensing Case Study Dolby Laboratories.

Background.

Evolution of the Current Licensing Model.

Symbiosis of Software and Hardware.

Summary of Current Program.

Future Trends.

Licensing Case Study Home THX.

Background.

Licensing Model.

Discussion.

University Licensing Case Studies.

Licensing Case Study Stanford University.

Introduction.

Cohen-Boyer Recombinant DNA.

177Background.

Intellectual Property.

Licensing Strategy.

Results.

FM Synthesis.

Background.

Intellectual Property.

The Exclusive License.

Results.

The Sondius Trademark Licensing Program.

Patent Case Studies.

Patent Case Study Compton s NewMedia.

Patent Licensing Case Study SGS-Thomson.

Background.

Method.

Negotiations.

Litigation Strategy.

Settlement.

Follow-through.

Patent Case Study The Auction of Wang Laboratories Patent Portfolio.

Appendix B Sources of Additional Information.

Organizations.

Licensing and Intellectual Property Associations.

Technical/Trade Organizations.

Publishing Resources.

Company Information.

Typical Trade Publications.

Trade Shows.

Appendix C Annotated Sample License Agreements.

Hybrid Technology License Agreement.

Software Distribution Agreement.

Appendix D Glossary of Intellectual Property Terms.

Bibliography.

Index.