Technology Management: Developing and Implementing Effective Licensing Programs / Edition 2

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A step-by-step guide to licensing technology-based intellectual property assets

For many modern, high-technology companies, licensing their technology-based intellectual property assets is the best way to fully exploit them. Firms that are unable to utilize their proprietary technology assets can license them to other companies more capable of doing so. This book serves as an informed and comprehensive guide to developing a technology licensing program and the legal hurdles, operational needs, and strategies involved.

Suitable for companies seeking to implement or redesign a technology licensing program, as well as individual inventors who want to protect and profit from their proprietary technology, Technology Management covers all the bases.

Learn to:

  • Develop a licensing strategy
  • Conduct proper valuations of intellectual property
  • Gather and utilize market research
  • Market your technology
  • Negotiate and draft licensing agreements

Utilize these handy resources:

  • Glossary of important terminology
  • Case studies and sample documents
  • Lists of organizations, publications, trade shows, and other helpful sources of information
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Product Details

Meet the Author

ROBERT C. MEGANTZ holds a BS degree in electrical engineering from Cornell University and is an Adjunct Lecturer at the Leavey School of Business at Santa Clara University, where he teaches a course on technology licensing. He works as a licensing and business development consultant.

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Table of Contents

Preface xv
Acknowledgments xix
1 To License or Not to License... 1
Alternative Approaches 1
New Venture 1
Acquisition 2
Joint Venture 2
Licensing 3
Strategic Alliance 3
Sale 3
Technology Management Strategies 3
Types of Licensing 4
Licensing-Out 5
Licensing-In 6
What to Do after Deciding to License 7
Financial Considerations 8
2 Intellectual Property 11
Patents 11
Background 11
Requirements for Patenting 16
Factors in Determining Whether to Patent 17
Patent Marking 20
Trademarks 20
Background 20
Using Trademarks in Technology Licensing 21
Trademark Development 22
Trademark Protection 23
Copyrights 24
Background 24
Protecting Copyright 25
Know-How 26
Background 26
Protecting Know-How 26
Mask Works 37
Background 37
Protecting Mask Works 37
Intellectual Property Management 37
Goals 37
Auditing Intellectual Property 38
Developing an IP Strategy 40
Patents 40
Trademarks 40
Copyrighted Works 42
Mask Works 44
Proprietary Know-How 44
IP Maintenance 45
3 Researching the Market 47
Information Needed 48
General Information 48
Companies and Products in the Market 49
Technologies Available 50
Licensing Practices 50
Sources of Information 51
Internal 51
Targeted Companies 51
Online and Subscription Services 51
Trade Publications 52
Trade Associations and Shows 52
Patent Searches 52
Universities 53
Government Agencies 53
Licensing Programs 53
Preparing the Data 54
Organizing the Raw Data 54
Documentation 55
Synopses 55
Uses for Market Information 56
Market Overview 56
Revenue Projections 56
Strategy Development 56
Internal and External Contacts 56
Determining Value 56
4 Technology Valuation 59
Sharing Profits 60
Cost-Based Valuation 61
Example 61
Market-Based Valuation 62
The 3% to 5% Rule 62
Industry Standards 63
All Industries 63
Computing 63
Biotechnology 64
Automotive 64
Health Care 64
Consumer Electronics 64
Auction 65
Example 65
Economic Analysis 69
Example 73
Using Discounted Cash Flow to Calculate Net Present Value 74
Net Revenue Amounts 75
Timing of Payments 75
Risk 75
Net Present Value Calculation 75
Example 76
5 Licensing Strategies 79
Developing a Licensing Strategy 79
Strategic Fit 80
Revenues 80
Financial Terms 81
Improvements and Continuity 82
Strategy Considerations 83
Exclusivity 83
Cross-Licensing 84
Additional Licenses Required 84
Market and Territorial Restrictions 85
Other Restrictions 85
Future Developments 86
Technical Assistance 87
Royalties 87
Sublicensing 89
Warranties, Indemnification, and Liability 90
Anti-trust/Restraint of Trade 91
Taxes 93
Licensing from Universities 94
Background 95
Characteristics of University Licensing 97
Licensing from the U.S. Government 99
Advanced Techniques--Corporate Licensing 99
Benefits 100
Types of Products 101
Implementing a Corporate Licensing Program 102
6 Technology Marketing 103
Factors Affecting Marketability 104
Economic Viability 104
Utility 104
Stage of Development 105
Proven Performance 106
Understanding the Market 106
Developing a Marketing Strategy 106
Targeting Prospective Partners 107
Defining the Process 109
Contacting the Targeted Licensee 110
Use of a Non-Disclosure Agreement (NDA) 114
Exploratory Meeting 118
Unsolicited Inquiries 118
Public Relations 119
Trade Shows 119
Publications and Trade Organizations 120
Other 120
7 Negotiating and Drafting Agreements 121
Negotiation in the 21st Century 122
Negotiation Concepts 122
Drafting Agreements 129
Use of a Memorandum of Understanding 129
Agreement Structure 129
Cover Page and Table of Contents 129
Recitals 131
Definitions 131
License Grant 132
Payments 132
Other Obligations 132
Termination 132
Warranties, Indemnification, Liability, and Authority 132
Miscellaneous Provisions 133
Licensing Computer Software 133
Background 134
Current Licensing Practices 134
The Open-Source License Model 135
Future Trends 136
Dealing with Infringers 136
Determining Infringement 136
Patents 137
Copyrights 137
Trademarks 138
Do Nothing 138
Escalating Actions 138
High-Level Response 141
Defensive Licensing 142
Selling Infringed Patents 142
Advanced Licensing Techniques--Hybrid versus Separate Licenses 144
Hybrid Agreements 144
Separate Agreements 147
Separate Agreement Models 149
Conclusion 151
8 Post-Agreement Activities 153
By Licensor 154
Deliverables 154
Agreement Maintenance 155
IP Maintenance 155
Trademark Quality Control 156
By Licensee 156
Payments 157
Other Obligations 157
Royalty Auditing 157
Why Audit? 158
Audit Timing and Frequency 159
The Audit Process 160
Problems Found in Audits 162
Summary of Audit Principles 162
Leveraging License Agreements 162
The Licensing Organization 163
Management 164
Administration 165
Technical Services 166
Marketing 167
Legal Counsel 167
Local Liaison Offices 168
Advantages of Forming a Licensing Organization 168
Appendix A Case Studies 171
Consumer Electronics Industry Case Studies 171
Licensing Case Study--Dolby Laboratories 171
Background 171
Evolution of the Current Licensing Model 171
Symbiosis of Software and Hardware 172
Summary of Current Program 172
Future Trends 174
Licensing Case Study--Home THX 174
Background 174
Licensing Model 175
Discussion 175
University Licensing Case Studies 176
Licensing Case Study--Stanford University 176
Introduction 176
Cohen-Boyer Recombinant DNA 177
Background 177
Intellectual Property 177
Licensing Strategy 178
Results 179
FM Synthesis 179
Background 179
Intellectual Property 179
The Exclusive License 179
Results 179
The Sondius Trademark Licensing Program 180
Patent Case Studies 181
Patent Case Study--Compton's NewMedia 181
Patent Licensing Case Study--SGS-Thomson 183
Background 183
Method 183
Negotiations 184
Litigation Strategy 184
Settlement 184
Follow-through 184
Patent Case Study--The Auction of Wang Laboratories' Patent Portfolio 185
Appendix B Sources of Additional Information 191
Organizations 191
Licensing and Intellectual Property Associations 191
Technical/Trade Organizations 195
Publishing Resources 199
Company Information 200
Typical Trade Publications 203
Trade Shows 203
Appendix C Annotated Sample License Agreements 205
Hybrid Technology License Agreement 205
Software Distribution Agreement 237
Appendix D Glossary of Intellectual Property Terms 243
Bibliography 257
Index 261
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