2 years ago




Introduction 4

Successful Technology Licensing This text focuses on licensing as a means of exploiting intellectual property (IP). Before examining the licensing process it is important to consider the context in which licensing may occur. IP, as an asset to a business, may be exploited in many ways. A business may acquire IP for defensive purposes – using the IP to prevent copying of the businesses products or service or to assert in response to an IP challenge from another party. IP may also be used offensively – aggressively asserting it to frustrate competitors, obtain market share, control geographic markets, or generate revenue. Many businesses use their IP assets as leverage in negotiations for business deals, such as, for example, joint research and development arrangements, acquisitions or mergers, or strategic collaborations. Sophisticated businesses use IP for many different business purposes; basic licensing as discussed in this text is only one way to exploit IP. The basic principles of licensing, as explained in this text, apply to most of the more complex methods of exploiting IP. A significant part of strategic collaboration, for example, is cross licensing of the parties’ IP so that each party can cooperatively develop, manufacture and market products for their mutual benefit. Even aggressive assertions of IP against competitors, in most cases, end with a settlement in which the IP is licensed to the competitors. Learning the basics of licensing is a prerequisite to undertaking any of the more complex means for exploiting IP. An introduction to successful technology licensing may be summarized by six fundamental and simple ideas. First: Technology licensing only occurs when one of the parties owns valuable intangible assets, known as Intellectual Property (IP), and because of that ownership has the legal right to prevent the other party from using it. A license is a consent by the owner to the use of IP in exchange for money or something else of value. Technology licensing does not occur when there is no IP. However, IP is a broad concept and includes many different intangibles (e.g. patents (inventions), copyright (works of authorship including technical manuals, software, specifications, formulae, schematics, and documentation, among other things), know-how (e.g. expertise, skilled craftsmanship, training capability, understanding of how something works), trade secrets (a protected formula or method, undisclosed customer or technical information, algorithms, etc.), trademarks (logos, distinctive names for products and services), industrial designs (the unique way a product looks such as a computer’s molding), and semiconductor mask works (the physical design of semiconductor circuits). Second: There are different kinds of technology licenses. You will hear licenses referred to by many names, but it is useful to think of them in three categories. Licenses may be for certain IP rights only (e.g. a license to practice an identified patent or to copy and distribute a certain work of authorship). Licenses may be for all the IP rights of any kind that are necessary to reproduce, make, use, market, and sell products based on a type of technology (e.g. a license to develop a 5

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