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09.15-10.45 Setting Objectives and Strategy In this session we examine our role in taking a technology from the moment we ‘discover’ it to the time that it is finally licensed. Using a real case study, we discuss what it is we – and the academics – are trying to achieve with an eventual licensing deal, what the steps are along the way and our role in making it happen.We take a real, early stage technology as an example and ask how we would ‘advise’ the academics involved and how we would set out a roadmap that says who will do what with key milestones.We also identify those elements of the overall ‘process’ that we find the most complex and time-consuming – thereby setting a context for the course.
11.15-12.30Market Research: finding a potential licensee Most KTOs patent many more inventions than they end up licensing. The most ambiguous, time-consuming and speculative part of our role is identifying potential licensees. We are never going to license all of our patents but a greater emphasis on proactively identifying and talking to potential licensees will improve the odds. In this session we learn some useful approaches and methodologies researching technology markets.
13.30-14.15Non-patent IP We tend to think that licensing revolves around patents. However, there are many other types of ‘intellectual asset’ that can help a licensee to get a head start and fend off potential future competitors. These all have value, and can all be included in a license agreement, as long as the rights licensed are carefully circumscribed.
14.15-15.15Deal Strategy- the essence of a wise deal A wise deal is one that provides the right incentives to both parties and a fair return to each, prevents opportunistic behaviour by each, and future-proof. There is no way of guaranteeing a wise deal – but there are ways in which you can almost guarantee that a deal will go sour and needs to be re-negotiated. An experienced professional helps us to find out how to avoid ‘foolish’ deals and handle situations where despite everything, the agreement has to be ‘re-visited’.
15.45-16.00 Briefing for the evening Speakers: Course Team
16.00 – 17.00Team case study: Break-out session 1 Each participant brings along her or his own license case (pre-or post-deal). The group breaks out in small teams and discusses the individual cases – agreeing to focus one to be discussed in more detail tomorrow (and presented in the final session). Speakers: Course Team
17.00 – 18.15 Preparing for Due Diligence Any licensee will want to be sure that the intellectual property they’re licensing is solid, especially if they are going to invest heavily in its further development. They will want a range or reassurances – from the reasonable (e.g. for you to demonstrate and/or warrant that you own the rights you are licensing) to the impossible (e.g. that the technology works). Anyone who has been through this process wishes that they had been better prepared since getting documents together can damage momentum and confidence. In this session we learn how to get your ducks in line.
08.45-10.45 Finance and valuation One of the most difficult issues we face is putting a value on our intellectual property. There are many different ways to do this, from rigorous ‘DCF’ analysis, to pure ‘horse trading’. The outcome and costs of IP commercialisation are inherently uncertain and so there is never going to be a fully deterministic approach to valuation – but there are some methods and benchmarks that can at least strip out some of the ambiguity. In this session we explore and practice some of these methods.
11.15-12.30 Anatomy of a license agreement In this intensive session we explore the underlying structure and specific terms of a robust license agreement. We come to understand the purpose of each section of the agreement, what it is trying to achieve, the commercial issues being addressed the alternative options and what can go wrong if clauses are drafted casually or without understanding their implications. The underlying premise is that licensees will probably renege on badly-written agreements.
13.30-15.15 Negotiation strategy – when to stand firm The university (licensor) usually prepares the first draft of a License Agreement and sends it off.A while later we receive a marked-up response covered with red ink and accompanied by a letter explaining the reasonableness of all the changes. This is where the negotiation starts – we need to decide where we can give ground and where we have to stand firm and be willing to argue our position. In this session, we join a negotiation at the point at which we have received an initial response and must decide how to respond.
15.45-16.30 How Companies Value Patents We tend to think of patents the same way as we do academic publications – as a way of claiming ‘priority’ and exclusivity over a new technology. Industry has a very different view of the world, using patents as just one of a portfolio of strategic assets. However, different industries use patents in very different ways. Unless we are aware of how businesses value and ‘use’ patents in a commercial context we really cannot hope to see eye to eye in any negotiation– or structure deals that result in optimal mutual value exchange. In this session we understand patents from the perspective of an industrial licensee.
16.30-17.30 Achieving Commercial Objectives As soon as we start talking to a potential licensee we begin to make commitments and create ‘give and take’ understandings that we would like to see in an eventual license agreement.Many of these terms turn out to be fiendishly difficult or even impossible to convert into robust legalese. In this session we attempt to convert some very reasonable needs into ‘fully contingent’ clauses and explore other (e.g. incentive) based mechanisms for achieving the same ends.
17.30-18.30 Team case study: break-out session 2 You take an hour in your teams to discuss the issues around the case that you selected in Session I – then prepare a five-minute (two flip chart/slides) presentation. Speakers: Course Team
09:00 – 09:45 Team case study: presentation and feedback by panel (Part I)
Each team is given the floor to pitch their case and to highlight essentialissues, problems and solutions for their case.
Speakers: Course Team
09.30 – 10.45 How robust is the deal? The ink is dry, and we think we have cut a great deal – a lucrative mix of loyalty, milestones and (sometimes) equity – now relax and wait for the cash to pour in. Well, if you are lucky, but it is likely that commercialisation takes an unexpected path and you find that one or more of those revenue streams is threatened or re-negotiated. In this session we study the case of a licensee seeking to ‘discuss’ the terms of the original license and, with the help of an expert panel, discuss what our response should be.
10.45 – 11.15 Coffee Break
11.15 – 12.45 Team case study: presentation and feedback by panel (Part II) Speakers: Course Team
12.45-13.00 Wrap Up Speakers: Course Team
13.00 – 14.00 Lunch
Other speakers will be confirmed very soon.
Venue Galaxy Hotel ul. Gęsia 22a 31-535 Kraków, Poland Tel:+48 12 342 81 00
More information about reservations will come soon.
Training Course Rates
Member Early Bird available until 16th October 2019: €1290
Member regular fee after 16th October 2019: €1350
If you are not a member join here for €250 a year and benefit immediately from the membership discounts and other specials
CE Points: 18
How to market technologies to attract and secure potential licensees.
How to value Intellectual Property including patents to prepare for a negotiation.
How to negotiate a licence. Tips to minimise roadblocks and close favourable deals.
How to manage licences post signature including collecting royalties and running audits.
What to do when things go wrong?
How to negotiate licences to ensure a win-win.
Marketing Intellectual Property
Valuing Patents and other IP
Negotiating a Licence
Post deal management
Handling difficult situations
Why join this course?
Technology transfer is the business of selling new technologies to companies that can make products or services from them. Our challenge is to identify potential licensees and negotiate a balanced license agreement – which involves a lot more than just agreeing a royalty rate. The process is not inherently complex – but there are many good practices and strategies to learn (and bad ones to avoid).
In this highly interactive course, we will explore the many different facets of the licensing process through case studies, teamwork and workshops. You will learn from experienced practitioners – those who have negotiated many complex license agreements. And you will meet both academia and industry counterparts to understand their different perspectives on licensing technologies.
Who should attend?
This course targets technology transfer professionals in academia and in industry with at least two years of experience in technology marketing and/or licensing and will focus on the development of personal skills and insights. Do you need to learn the latest marketing and negotiation techniques to prepare you for licensing technologies to industry or scouting new technologies from academia? Are you looking to become an effective Licensing Executive or Contracts Manager?
ASTP brought the right structure and terminology into my knowledge on technology licensing.
René Widmer, ETH Transfer, Switzerland
The course exceeded my expectations. We were all to exchange experiences and learn different options of approaches to existing problems.
Patricia Lima, Instituto superior technico, Portugal