Technology Licensing

09:00 - 09:15    Course introduction

09:15 - 10:15    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.

10:15 - 10:45    Break

10:45 - 11:45    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.

11:45 - 12:30    Finding Licensees debrief + Using Template Agreements

Two topics to discuss with Orin:

1. Where do licensees appear from – is marketing effective (if so, what methods) or do licensees approach you or result from current (e.g. research) relationships?
2. Orin as done some work with AUTM on creating template license agreements – visible to both parties – that eliminate complex negotiation? We discuss where these work and their limitations.
   
   A conversation with Orin Herskowitz, Senior Vice President of Intellectual Property and Tech Transfer for Columbia University, USA
   

12:30 - 13:30    Lunch

13:30 - 14:30    Non-patent IP (Melanomic Moles)

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.

15:00 - 15:30    Coffee Break

15:30 - 16:30    Doing Due Diligence – uncovering compromised IP

Universities and their academics seek funding from many sources - some informal - and are quite ‘porous’ places in terms of researchers flowing through their labs and openly talking about their research. With all this going on it’s possible to discover that don’t have the IP rights we need to enter into a license. At best you discover (and remedy) this before signing – at worst, problems surface much later, exposing the university to legal action. Sometimes DD issues can be showstoppers.

In this session welcome someone who does IP DD for a living. He gives examples of what can go wrong and gives simple steps to prevent you landing your institution in hot water.

16:00 - 17:00    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.

19:30 - 22:30    Networking Dinner

09:00 - 10:30    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.

10:30 - 11:00    Break

11:00 - 12:00    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.

12:00 - 13:00    Lunch

13:00 - 14:30    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.

14:30 - 15:00    Coffee Break

15:00 - 16:30    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.

16:30 - 17:15    A few words on Pipeline Agreements

Licensees are naturally concerned that an inventor of the licensed IP will likely continue to work in the same area and could come up with further technology (and patents) that improves on or undermines the original IP.

To neutralise this possibility, they often seek limited rights to future IP within the field and, seeing things from their perspective, we want to agree in principle.

But should we? Many who have given rights to pipeline IP have lived to regret it. What are the dangers?

09:00 - 10:00    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?

10:00 - 10:30    Break

10:30 - 11:30    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.

11:30 - 12:30    Dirty Little Tricks in Licensing

A light-hearted look at some of the tactics that are commonly used against us during license negotiations.

12:30 - 12:45    Wrap up

12:45 - 13:45    Lunch