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. 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.

Trainer: Jeff Skinner

10:15 - 10:45    Break

10:45 - 12:00    Market research: finding a potential licensee

Most KTOs 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.

Trainer: Jeff Skinner

12:00 - 13:00    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 these assets are protected and defined, and you have permission to license them.

Trainer: Jeff Skinner

13:00 - 14:00    Lunch

14:00 - 15:00    Doing Due Diligence – uncovering compromised IP

Universities and their academics seek funding from many sources, sometimes informal. Researchers and students join and leave. 

In such a porous environment it is likely that we do not 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 due  diligence issues can be showstoppers. 

In this session, you shall hear from an expert working in intellectual property due diligence. They shall give examples of what can go wrong and suggest simple steps to prevent you from landing your institution in hot water. 

Trainer: Dario Colombo

15:00 - 15:30    Coffee break

15:30 - 17:00    Placing 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.

Trainer: Séverine Iffland

19:00 - 22:00    Networking dinner

09:00 - 10:30    Preparing for negotiation

Licensing contracts are complex deals that encompass many aspects, including, not least, strategic and political stakes. How do you prepare for such a negotiation?

Before even starting discussions with the partner, 80% of the outcome is already determined.. From knowing the market to understanding our partner’s situation, considering external influencing factors as well as our own organisation's goals, processes, constraints and influence over this negotiation. Let us identify some of the many parameters and dive into preparing for a “successful” negotiation.

Trainer: Séverine Iffland

10:30 - 11:00    Break

11:00 - 12:00    Anatomy of a license agreement

In this intensive session we explore the underlying structure and specific terms of a robust license agreement.

We will 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 the implications. The underlying premise is that licensees will probably renege on badly written agreements.

Trainer: Agnieszka Wozniak

12:00 - 13:00    How licensees wriggle out of royalties

The majority of licensees will faithfully pay the royalties they agreed to up front, but some will try to argue that they owe nothing; especially when the payments are substantial. Some will exploit ambiguities within the agreement; some may even structure their business to exploit loopholes.

In this session we give you a seemingly good agreement position you as the licensee and invite you to identify ways to pay nothing.

Trainers: Jeff Skinner, Séverine Iffland & Agnieszka Wozniak

13:00 - 14:00    Lunch

14:00 - 15:30    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.

Trainers: Jeff Skinner and Agnieszka Wozniak.

15:30 - 16:00    Coffee break

16:00 - 17:15    Post-signature license management

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

Trainer: Stuart Burns

09:00 - 10:00    A word 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 improve or undermine 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?

Trainers: Jeff Skinner and Agnieszka Wozniak

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.

Trainer: Jeff Skinner

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.

Trainer: Jeff Skinner

12:30 - 13:30    Lunch