2 years ago



IP Assets

IP Assets Management Series Preface Intellectual Property (IP) licensing is a frequently used means of exploitation of IP, including in the process of commercialization of research results generated in universities and publically funded research institutions. In today’s knowledge-based economies, the prevailing model of IP collaboration among academic and business organizations is “open innovation”, based on licensing deals among various participating partners. Therefore, there is a growing interest on the part of innovation stakeholders in the World Intellectual Property Organization (WIPO) Member States in acquiring more practical knowledge about licensing as a useful tool for transfer of knowledge and IP. This Successful Technology Licensing (STL) Manual was developed as a response to requests for a user-friendly manual aimed primarily at an audience of businesspersons, technology managers and scientists who are dealing with licensing in the course of their work. Licensing occurs in the context of various business and collaboration relations, such as mergers and acquisitions, joint ventures, research collaboration agreements, joint research and development arrangements, etc. This Manual focuses on issues essential for understanding licensing, including: • the context in which licensing may occur; • key terms of a licensing agreement and negotiation methods; and • how to prepare for and negotiate a winwin licensing contract. It is evolving material that can and should be reviewed and improved in line with users’ needs. In the framework of the Development Agenda (DA) process – in particular, DA Recommendations 7, 23 and 32 – WIPO Member States have requested more information regarding (a) the interface between Intellectual Property Rights (IPRs) and competition policies, (b) how to better promote pro-competitive intellectual property licensing practices and (c) information on the links between IPRs and competition policies. In response to this request, WIPO has prepared this new, second edition of the STL Manual, with a new Cluster V on “Understanding Certain Anticompetitive Concerns Related to Technology Licensing”, followed by concrete examples of pro-competitive licensing practices in the Annex II. I wish to extend my appreciation to all who provided guidance and comments in the drafting of this work, in particular to Mr. Patrick O’ Reilley, who edited the text and provided very valuable contributions to this booklet on behalf of the Licensing Executives Society International (LESI). Francis Gurry Director General WIPO 2

Table of Contents I. Introduction II. Preparation for Negotiation III. Key Terms IV. Conducting the Negotiation V. Understanding Certain Antitrust Concerns Related to Technology licensing VI. Using the Signed Agreement Appendix I & II 3

Exchanging Value - Negotiating Technology Licensing - WIPO
Exchanging Value - Negotiating Technology Licensing - WIPO
Template Collaboration Agreements - Forfás
Diving Deeper Into Complex License and Business Agreements
Licensing Basics for Technology and Life Sciences Companies
Class 22 (March 22 at 10 a.m.) slides (pdf)
Technology Licensing and Online Commerce - Fenwick & West LLP
Your Guide to IP
Open-source software - IFCLA 2012 Conference
Licensing -
Antitrust Issues in IP Licensing.pdf - Axinn, Veltrop & Harkrider LLP
Patent Licensing in Australia - Federal Laboratory Consortium for ...
LES Semiconductor Group - Licensing Executives Society USA and ...
The MIT, BSD, Apache, and Academic Free Licenses
Licensing Executives Society USA and Canada
Revised look - Choate Hall & Stewart
China Law - Quarles & Brady LLP