Technology Licensing

09:00 - 09:15    Course introduction

09:15 - 10:30    Setting objectives and strategy

In this session we examine our role in taking a technology from the moment we ‘discover’ it to the time when 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 are the steps along the way and what is our role in making it happen?

We take an example of a real, early-stage technology 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.

10:30 - 11:00    Break

11:00 - 12:00    Market research: finding a potential licensee

Most TTOs patent many more inventions than they finally license. 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 of success. In this session, we learn some useful approaches and methodologies for researching technology markets.

12:00 - 13:00    Lunch

13:00 - 14:00    The consequences of sloppy, amateurish deals

A clever deal is one that provides the right incentives and a fair return to both parties; it prevents opportunistic behaviour, and is 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 will need to be re-negotiated.

Here we find out how to avoid 'foolish' deals and handle situations where, despite everything, the agreement needs to be revisited.

14:00 - 15:00    Using Template Agreements

There are a few key terms in any license agreement, such as exclusivity and royalty, so why not construct a ‘template’ agreement’, visible for any Licensee to see and use therefore eliminating fuss or complex negotiation? This approach has been tried with some success at Columbia University.

In this session, we learn how this straightforward approach has been attempted. By discussing the limitations we begin to understand why License Agreements sometimes need to be hand-crafted to fit circumstances and commercial objectives.

15:00 - 15:30    Coffee Break

15:30 - 16:30    Negotiating anything (particularly license agreements)

Robert MacWright has spent a career negotiating IP and legal agreements. He is regarded as a master negotiator and he has agreed to share some of his good humour and tactics with you.

16:30 - 17:00    A few words on due diligence

Any licensee will want to be sure that the intellectual property they are licensing is solid especially if they are going to invest heavily in its further development.

They will want a range of 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 in preparation

19:00 - 19:00    Networking Dinner

09:00 - 10:45    Putting a value on your Intellectual Property

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 ‘Discounted Cash Flow’ 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 strip out some of the ambiguity. In this session we explore and practice some of these methods.

10:45 - 11:15    Break

11:15 - 12:15    The strategic use of License Terms

As soon as we start to talk 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.

12:15 - 13:15    Lunch

13:15 - 15:00    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.

15:00 - 15:30    Coffee Break

15:30 - 17:15    Negotiation strategy – when to stand firm

The university (licensor) usually prepares the first draft of a License Agreement and sends it off. Sometime 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, where we have to stand firm and be willing to argue our position.

In this session, we join one such negotiation when the initial response has been received, we must now decide how to respond.

17:15 - 18:15    Team case study: break-out session

Take an hour with your team to discuss the issues around the case that you selected in the previous session and prepare a five-minute (two flip chart/slides) presentation on your proposed solution.

08:30 - 09:30    Feedback: real problems, any solutions?

Feedback from the previous evening’s discussions on problem cases,. This is an opportunity to examine whether anything you have learned over the last two days helps you to move forward with any of your complex cases.

09:30 - 10:30    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 very lucky.

Sadly, it is highly 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.

10:30 - 11:00    Break

11:00 - 11:45    Non-patent IP

We tend to think that licensing revolves around patents. There are, however, many other types of ‘intellectual asset’ that can help a licensee to get a head start and fend-off potential future competitors. All of these have value, and can all be included in a license agreement, as long as the rights licensed are carefully circumscribed.

11:45 - 12:45    Post-signature license management

We have all read the reporting/audit clauses in license agreements. But what should a royalty report state? When to think about an audit? How to prepare for an audit? What does it cost? How will your licensee react?

12:45 - 13:00    Wrap up

13:00 - 14:00    Lunch