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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.

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).

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?

Learning Objectives

  • 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.

Course Topics

  • Marketing Intellectual Property
  • Valuing Patents and other IP
  • Negotiating a Licence
  • Post deal management
  • Handling difficult situations
  • Programme
  • Speakers

Programme

  • Tue 03 November 2020

    • 09:30 - 10:00    Setting objectives and strategies

      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 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.

    • 10:00 - 10:15    Break

    • 10:15 - 11:00    Anatomy of License Agreement (Part 1)

      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.

    • 11:00 - 11:15    Break

    • 11:15 - 12:00    Anatomy of License Agreement (Part 2)

    • 12:00 - 12:15    Break

    • 12:15 - 13:00    Anatomy of License Agreement (Part 3)

  • Thu 05 November 2020

    • 09:30 - 10:00    Marketing Research

      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.

    • 10:00 - 10:15    Break

    • 10:15 - 11:00    Non-patent IP (Part 1)

      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.

    • 11:00 - 11:15    Break

    • 11:15 - 11:45     Non-patent IP (Part 2)

    • 11:45 - 12:00    Break

    • 12:00 - 12:45    Non-patent IP (Part 3)

  • Fri 06 November 2020

    • 09:30 - 10:15    Preparing for due diligence (Part 1)

      Any licensee will want to be sure that the intellectual property they’re licensing is solid, especially if they’re 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’re 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.

    • 10:15 - 10:30    Break

    • 10:30 - 11:15    Preparing for due diligence (Part 2)

    • 11:15 - 11:30    Break

    • 11:30 - 12:00    Preparing for due diligence (Part 3)

    • 12:00 - 12:45    Case Study

  • Mon 09 November 2020

    • 09:30 - 10:15    Finance and valuation (Part 1)

      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 commercialization 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.

    • 10:15 - 10:30    Break

    • 10:30 - 11:00    Finance and valuation (Part 2)

    • 11:00 - 11:15    Break

    • 11:15 - 12:00    Opens Source Business Model (Part 1)

      Many research centres are keen to share their software results under open source licenses, permitting widespread use, testing and improvement. However, when it comes to setting up a venture based on open source (spin-out, licensing), the business model is not the traditional “let’s sell licences”, but there are a variety of tried and tested open source business models depending on technology, stakeholders, market, and community. This section looks at these business model and discusses their pros and cons.

    • 12:00 - 12:15    Break

    • 12:15 - 13:00    Opens Source Business Model (Part 2)

  • Tue 10 November 2020

    • 09:30 - 10:15    How robust is the deal (Part 1)

      The ink is dry, and we think we’ve 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’re lucky, but it’s 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.

    • 10:15 - 10:30    Break

    • 10:30 - 11:15    How robust is the deal (Part 2)

    • 11:15 - 11:30    Break

    • 11:30 - 12:00    How robust is the deal (Part 3)

    • 12:00 - 12:15    Break

    • 12:15 - 12:45    Wrap-up

Speakers

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What people say about us

ASTP brought the right structure and terminology to my knowledge of technology licensing.

René Widmer
René Widmer - ETH Transfer, Switzerland

What people say about us

The course exceeded my expectations. We exchanged experiences and learned different options of approaches to existing problems.

Patricia Lima
Patricia Lima - Instituto Superior Technico, Portugal

What people say about us

Most experienced technology transfer crew in the Europe.

Krzysztof Maternicki
Krzysztof Maternicki - Jan Dlugosz University, Poland