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Technology transfer is the business of selling new technologies to companies that can make products or services from them.

This is a 5-day course taking place on the 2nd, 3rd, 7th, 8th and 9th June.

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. You will meet both academic and industry counterparts to understand their different perspectives on licensing technologies.

Learning Objectives

• How to market technologies to attract and secure potential licensees

• How to value Intellectual Property

• including patents to prepare for a negotiation

• What to do when things go wrong

• How to negotiate licences to ensure a win-win situation

Course Topics

• Marketing Intellectual Property

• Valuing patents and other IP

• Negotiating a licence

• Post-deal management

• Handling difficult situations

  • Programme
  • Speakers

Programme

  • Wed 02 June 2021

    • 09:00 - 09:45    Setting objectives and strategies (Part 1)

      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.

    • 09:45 - 10:00    Break

    • 10:00 - 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 - 11:30    Break

    • 11:30 - 12:30    Anatomy of License Agreement (Part 2)

    • 12:30 - 13:30    Lunch

    • 13:30 - 15:00    Setting objectives and strategies (Part 2)

      Case study pre reading: Licensing the Medipix3 technology.

  • Thu 03 June 2021

    • 09:00 - 10:00    Market 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 - 10:30    Break

    • 10:30 - 11:30    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.

    • 11:30 - 12:00    Break

    • 12:00 - 13:00    Non-patent IP (Part 2)

    • 13:00 - 14:00    Lunch

    • 14:00 - 16:00    Negotiations strategy – when to stand firm & case work

      The university, the licensor, prepares the first draft of a License Agreement and sends it off. A marked-up response covered with red ink and accompanied by a letter explaining the reasonableness of all the changes is received by return: this is when the negotiation starts. Now it is the time to decide where to give ground and where to stand firm, and prepare to argue our position. In this session we join one such negotiation at the point when the initial response is received: now it is time to decide how to respond.

  • Mon 07 June 2021

    • 09:00 - 10:30    Preparing for due diligence

      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.

    • 10:30 - 11:00    Break

    • 11:00 - 13:00    Deal strategy: the essence of a wise deal (case study)

      A wise deal provides the right incentives and a fair return to both parties, 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. An experienced professional helps us to find out how to avoid 'foolish' deals and handle situations where, despite everything, the agreement must be re-visited.

  • Tue 08 June 2021

    • 09:00 - 10:30    Finance and valuation

      One of the most difficult issues we face is putting a value on our intellectual property. There are many 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 strip out some of the ambiguity. In this session we explore and practice some of these methods.

    • 10:30 - 11:00    Break

    • 11:00 - 11:45    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.

    • 11:45 - 12:15    Break

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

    • 13:15 - 14:15    Lunch

    • 14:15 - 16:00    Afternoon case work

      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 on one to be discussed in more detail. Then prepare a five-minute (two slides) presentation on your proposed solution and presented in the final session tomorrow.

  • Wed 09 June 2021

    • 09:00 - 10:00    How robust is the deal?

      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 is likely that commercialisation will take an unexpected path. One or more of those revenue streams maybe 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.

    • 10:00 - 10:15    Break

    • 10:15 - 11:00    Post-signature license management

      The reporting/audit clauses in license agreements have been read, but what should a royalty report state? When should you think about an audit? How should you prepare for an audit? What does it cost? How will your licensee react?

    • 11:00 - 11:30    Break

    • 11:30 - 12:30    Achieving commercial objectives

      When start talking to a potential licensee we 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, such as incentive, based mechanisms for achieving the same ends.

    • 12:30 - 13:30    Lunch

    • 13:30 - 15:30    Case presentations and feedback by panel

      Each team is given the floor to pitch their case and to highlight essential issues, problems, and solutions for their case.

    • 15:30 - 16:00    Course 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