Expert Group Report Management of Intellectual Property in ... - KoWi

other words, from the PRO perspective, technology should be given the best possible chance and if it
fails to be a commercial or useful product then it should be as a result of the technology itself failing
or because there is better or more efficient technology available to the industrial partners. It should
not fail because of a lack of effort by either the PRO or the industrial partners.
Another key aspect of the licensing model is that very often technology from PROs is of a generic
nature and therefore there will be a wide range of potential users in different technical fields. By
granting licenses to a wide range of industrial partners, then the technology can be developed and used
in each of the relevant fields.
From the industrial perspective, the licensing model has also been shown to be an attractive one and
works very well for many different industries. The key to the discussion about the licensing model is
that both sides need to separate issues of ownership from issues of user rights. Although ownership of
the intellectual property rights may vest in a single party such as the PRO, if the industrial partners
have sufficiently clearly defined user rights to make commercial gain from the technology then the
model can be a win-win solution for both sides. In particular, where licenses are granted on an
exclusive basis, companies are fully enabled to acquire the rights they need to both use the technology
and also to protect their user rights against third party infringes (provided that the licences are
registered).
3.3. Market Models
There can be two approaches to identifying licensees:
1. Active licensing by promoting the technology and offering licenses to potentially interested
commercial partners well positioned to develop and use the technology;
2. Compliance licensing by searching out likely infringers of the patented technology and negotiating
licence revenues in exchange for freedom of exploitation.
There are a number of organisations and publications that provide very useful information for
both licensees and licensors. Information available in the public domain includes details of
typical deals for example in the Biotech or Pharmaceutical Industry along with extensive
information collated by US PROs in connection with trends in licensing revenue and licensing
activity.
3.4. Key Issues to be addressed in the Licensing Agreement
As with any other contract, the content of a License Agreement is a matter to be freely negotiated by
the parties involved. These guidelines are intended to provide only a general overview and a KTO
should ensure that it has access to appropriate professional advisers. However, there are certain issues,
which the Group feels ought to be clearly agreed upon by the parties and addressed in the written
agreement in order to ensure that the licensing partnership succeeds.
3.4.1. Carefully define the subject matter of the License
Because there are a wide range of intellectual property rights such as patents and copyright through to
confidential know how and tangible materials such as animal models, it is very important that
everybody is clear about the subject matter of the licence. It is possible to define different access
rights to different types of Intellectual Property in a single licence agreement and it should be
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