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Developing and Implementing Effective Licensing Programs
In today’s high-technology industries, intellectualproperty is often a company’s most valuable asset. But theexploitation of intellectual assets is much more complicated thanthe exploitation of tangible assets such as buildings, machinery,and capital.
In many cases, licensing intellectual properties to othercompanies is the best way to utilize technology assetsacommon strategy in industries such as electronics, computing,telecommunications, biotechnology, and pharmaceuticals. Bylicensing their intellectual property to other companies betterpositioned to access certain markets, firms can fully utilizetechnology assets when they may not have the resources to do so ontheir own.
Technology Management is a step-by-step treatment of the subjectthat clearly and succinctly explains how to develop and implement atechnology licensing program in your company. It offers accessibleyet detailed descriptions of all aspects of a technology licensingprogram, from the basics to the small details to the long-termissues, including:
Helpful appendices offer case studies of licensing programs;market research resources such as organizations, publications, andWeb sites; sample license agreements; and a glossary of commonlicensing terms. For professionals seeking to implement aneffective technology licensing program or individual inventors whowant to protect and market their technology assets, TechnologyManagement serves as a comprehensive and straightforward guide tothe process.
1 To License or Not to License . . .
Technology Management Strategies.
Types of Licensing.
What to Do after Deciding to License.
2 Intellectual Property.
Requirements for Patenting.
Factors in Determining Whether to Patent.
Using Trademarks in Technology Licensing.
Protecting Mask Works.
Intellectual Property Management.
Auditing Intellectual Property.
Developing an IP Strategy.
3 Researching the Market.
Companies and Products in the Market.
Sources of Information.
Online and Subscription Services.
Trade Associations and Shows.
Preparing the Data.
Organizing the Raw Data.
Uses for Market Information.
Internal and External Contacts.
4 Technology Valuation.
The 3% to 5% Rule.
Using Discounted Cash Flow to Calculate Net Present Value.
Net Revenue Amounts.
Timing of Payments.
Net Present Value Calculation.
5 Licensing Strategies.
Developing a Licensing Strategy.
Improvements and Continuity.
Additional Licenses Required.
Market and Territorial Restrictions.
Warranties, Indemnification, and Liability.
Anti-trust/Restraint of Trade.
Licensing from Universities.
Characteristics of University Licensing.
Licensing from the U.S. Government
Advanced Techniques-Corporate Licensing.
Types of Products.
Implementing a Corporate Licensing Program.
6 Technology Marketing.
Factors Affecting Marketability.
Stage of Development.
Understanding the Market.
Developing a Marketing Strategy.
Targeting Prospective Partners.
Defining the Process.
Contacting the Targeted Licensee.
Use of a Non-Disclosure Agreement (NDA).
Publications and Trade Organizations.
7 Negotiating and Drafting Agreements.
Negotiation in the 21st Century.
Use of a Memorandum of Understanding.
Cover Page and Table of Contents.
Warranties, Indemnification, Liability, and Authority.
Licensing Computer Software.
Current Licensing Practices.
The Open-Source License Model.
Dealing with Infringers.
Selling Infringed Patents.
Advanced Licensing Techniques-Hybrid versus SeparateLicenses.
Separate Agreement Models.
8 Post-Agreement Activities.
Trademark Quality Control.
Audit Timing and Frequency.
The Audit Process.
Problems Found in Audits.
Summary of Audit Principles.
Leveraging License Agreements.
The Licensing Organization.
Local Liaison Offices.
Advantages of Forming a Licensing Organization.
Appendix A'Case Studies.
Consumer Electronics Industry Case Studies.
Licensing Case Study-Dolby Laboratories.
Evolution of the Current Licensing Model.
Symbiosis of Software and Hardware.
Summary of Current Program.
Licensing Case Study-Home THX.
University Licensing Case Studies.
Licensing Case Study-Stanford University.
Cohen-Boyer Recombinant DNA.
The Exclusive License.
The Sondius Trademark Licensing Program.
Patent Case Studies.
Patent Case Study-Compton's NewMedia.
Patent Licensing Case Study-SGS-Thomson.
Patent Case Study'The Auction of Wang Laboratories' PatentPortfolio.
Appendix B'Sources of Additional Information.
Licensing and Intellectual Property Associations.
Typical Trade Publications.
Appendix C'Annotated Sample License Agreements.
Hybrid Technology License Agreement.
Software Distribution Agreement.
Appendix D-Glossary of Intellectual Property Terms.