Business Law & Order - January 21, 2012

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This is the sequel to SPARK’s popular IP–1 session in October 2012. In this installment, we will provide the keys to technology licensing and university technology transfer. Jeanne Moploney of Dykema …

This is the sequel to SPARK’s popular IP–1 session in October 2012. In this installment, we will provide the keys to technology licensing and university technology transfer. Jeanne Moploney of Dykema Gossett PLLC will start by explaining the essentials entrepreneurs need to understand about technology licensing. Brian Copple from the UofM Tech Transfer Office will then talk about the many opportunities that exist for entrepreneurs to acquire cutting edge technology from universities, and how to work with university tech transfer offices.

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  • Analogy – Kids going to college
  • Agreements need to be specific
  • A common “solution” that is, in fact, a “problem” Leads to significant unintended consequences
  • Of course change the names. . ..
  • Change to however you want to do it
  • I added/deleted a few things. See what you think.
  • Tweaked a bit
  • tweaked
  • I like this one better
  • Add Rick, Bryce and MIRs
  • Up to you, but never hurts to show them some data about us.
  • Take out know how.
  • Added this, they need to know what we really want. . I also have slides on what we argue about the most, but might make it too long.
  • Ibridge is no longer active, check with Katie for the newer website


  • 1. Business Law & Order: Intellectual Property II – Keys to Technology Licensing January 21, 2013 © Ann Arbor SPARK
  • 2. The Keys to Technology LicensingAnn Arbor SPARK: Business Law & Order Series January 16, 2012 Mark G. Malven, Jeanne M. Whalen Results. Value. Dykema. California | Illinois | Michigan | North Carolina | Texas | Washington, D.C.
  • 3. Agenda• Basic concepts• Anatomy of a technology license (or IP-oriented JV) agreement• Financial terms• Change of control• Bankruptcy• Ownership issues• Conclusion Results. Value. Dykema. 3
  • 4. Technology vs. Intellectual Property• Technology = Stuff – Software – Equipment – Chemical processes• Intellectual Property = Legal Right (to Block Others) – 4 basic kinds - patents, copyrights, trade secrets and trademarks Results. Value. Dykema. 4
  • 5. Types of Technology IP• Patents – Protects technological developments (claimed inventions) – Independent development not a defense – Strongest protection for technology• Trade Secrets – Destroyed by disclosure – Tough to market without losing it – Independent development is a defense• Copyrights – Protects works of authorship (text, art, software) – Cannot protect ideas, only expression – Independent development is a defense – Weakest protection for technology Results. Value. Dykema. 5
  • 6. IP vs. Technology Licenses• Pure IP License – appropriate if no tech transfer – “I license you to make and sell widgets covered by U.S. Patent 1,234,567”• Pure Technology License – appropriate for a finished product – “I license you to use my equipment” – Would include an implied license to use the necessary IP of licensor• In business transactions, you will often have a combination Results. Value. Dykema. 6
  • 7. Types of Intellectual Property Transfers• Need to understand the differences between assignments and licenses• Labels not determinative, courts will reform agreements to make them consistent Results. Value. Dykema. 7
  • 8. Assignments• In writing• Entire right, title and interest (or undivided part of same for jointly-owned IP)• Cannot be done by Field of Use• Putting limitations on recipient can be problematic – Not OK: usage or future transfer limitations, retained enforcement rights, step in rights – OK: License back Results. Value. Dykema. 8
  • 9. Exclusive Licenses• Express or implied promise that others will be excluded• Can be limited by geography, field of use, time• Exclusive as to licensor? – Drafting Tip: Silence can be ambiguous. Best to be explicit regarding licensor’s retained rights and “non- competition” obligations• Drafting Tip for Licensor: Have measurable performance requirements for exclusive licensees – “commercially reasonable efforts” alone not enough! Results. Value. Dykema. 9
  • 10. Non-Exclusive Licenses• Freedom from infringement suit• Personal to licensee – Non-transferable by licensee unless clearly stated otherwise• Encumbers IP Results. Value. Dykema. 10
  • 11. Covenants Not To Sue• Similar to non-exclusive license, but• Personal from “licensor” – Does not encumber IP – “Licensee” not protected if IP transferred Results. Value. Dykema. 11
  • 12. Anatomy of a License Agreement – Core is the license grant section – What is licensed (IP type, technology, and what rights) • Patent: make, use, sell, offer for sale, import • Copyright: copy, create derivative works, distribute, etc. • Trade Secret: use • Trademark: use Results. Value. Dykema. 12
  • 13. Anatomy of a Technology License Agreement• License Grant – Exclusivity/Non-Competition – Retained Rights – Use of 3d Parties/Sublicensing• Financial Terms – Payment Structure – Royalty Base – Currencies – Taxes – Special Sales – Audit Rights – Recordkeeping and Reporting Results. Value. Dykema. 13
  • 14. Anatomy of a Technology License Agreement• Technology Transfer and Support• Improvements – Disclosure, Ownership and Grant Back Rights• Licensed Field• Territory• License Term/Termination• Licensee Obligations – e.g., engineering/sales efforts• Prosecution Rights• Enforcement Rights• Patent Validity Challenges (MedImmune)• Confidentiality• Transferability Results. Value. Dykema. 14
  • 15. Financial Terms Results. Value. Dykema. 15
  • 16. Payment Structures• Upfront payments• Milestone payments• Royalties – % of Net Sales vs. % of Net Profit vs. Fixed $ Per Unit – Net Profit often a bad idea – hard to determine, more subject to disputes Results. Value. Dykema. 16
  • 17. Pay Attention to the Royalty Base!• Parties frequently obsess over the royalty rate and pay too little attention to defining the royalty base. – What is a Unit? – Exclusions? • Standard components • Other royalty-bearing products• Remember: Even a low royalty percentage, multiplied against a large royalty base, can still be a lot of $$ Results. Value. Dykema. 17
  • 18. Special Dispositions• The smart licensor (and/or its lawyer) will have an agreement that addresses: – Bundling/package sales – Payments in kind – Related party sales – Promotional giveaways – Loss leaders – Demos/samples/internal use Results. Value. Dykema. 18
  • 19. Special Dispositions• Possible ways to address the above: – Fixed $ per unit – Pro rata allocations, based on list prices – Royalty as % of total price – % Royalty with floor $ per unit Results. Value. Dykema. 19
  • 20. Currency and Tax Issues• Commonly overlooked• Can turn good deal to bad deal• Currency – allocation of risks• Tax planning opportunities can be significant• Engage internal tax and finance resources early Results. Value. Dykema. 20
  • 21. Recordkeeping and Reporting• Quantities made and sold • Related party sales• Returns • Promotional giveaways• Bundling/package sales • [See Special Dispositions• Payments in kind issues above] • Reports should be certified Results. Value. Dykema. 21
  • 22. Audits and Interest• Audit rights – think these through• Drafting Tip for Licensors: – Don’t forget interest on late or non-payment – Consider escalating consequences for repeated Licensee failures to pay Results. Value. Dykema. 22
  • 23. MFN: Most Favored Licensee Clauses• Generally a bad idea• Licensor concerns: – Carefully circumscribe – field/ territory/notice and timing – Limit to substantially similar terms• Special circumstances – affiliates, settlements, cross-licenses Results. Value. Dykema. 23
  • 24. “Legal” Terms Results. Value. Dykema. 24
  • 25. Patent Prosecution Issues• Licenses frequently involve technology developments at a time when patents have not yet issued• Common to include rights to applications and patents that issue from them• Unless/until an application becomes a patent - no legal right of exclusion• For pending/future applications – Who picks the countries and controls prosecution? – Does the other party participate in the process? – Who pays for it? – Step-in rights? Results. Value. Dykema. 25
  • 26. Control of Enforcement Actions• Often overlooked, or have inconsistent enforcement provisions – Who decides whether or not to sue? (e.g., a first shot, chance to step in?) – Who pays for the litigation? • If licensee pays, can it recoup/offset costs from royalty payments? – If licensee wins, who gets the $$$? – Are royalties paid on the award? – If licensee sues, can it name licensor? Who pays licensor’s costs? – If licensee sues, does licensor participate in litigation? – Must licensor consent to a settlement? Results. Value. Dykema. 26
  • 27. Change of Control• Need to plan for mergers, acquisitions, etc. and include appropriate provisions in agreement• Non-exclusive patent and copyright licenses are by default non-transferable (under federal common law) – Contrast with generally free transferability of non-IP agreements – Very different treatment of assignability issues in merger context Results. Value. Dykema. 27
  • 28. Change of Control• Silence (or prohibition) will bar transfer by: – Asset sale – Forward merger (target into buyer) – Reverse merger (buyer into target) – Forward triangular merger (target into buyer sub)• Silence (or prohibition) will generally not bar transfer by: – Reverse triangular merger (buyer sub into target) – but even here there are exceptions • Can still bar transfer in RTM with a broad “deemed transfer” clause Results. Value. Dykema. 28
  • 29. Bankruptcy Matters – Basic Concepts• Ipso facto clauses are unenforceable• Trustee can reject or assume any executory contract• Reject – terminate license – Usually when licensor bankrupt – Done to increase the value of the IP asset prior to sale• Assume – keep or assign – Usually when licensee bankrupt – Continue using or transfer to 3d party for value Results. Value. Dykema. 29
  • 30. Bankruptcy Matters – Licensor Protections• Exceptions protecting licensors: – Trustee may not assume/assign when non-bankruptcy law excuses accepting another’s performance – Non-exclusive patent and copyright licenses are personal to licensee and therefore licensor need not accept performance from a transferee (Courts are split re exclusive licenses)• Unless agreement indicates parties clearly intended to permit assignment Results. Value. Dykema. 30
  • 31. Bankruptcy Matters – Licensee Protections• Section 365(n) of U.S. Bankruptcy Code is for the protection of licensees when licensor is in bankruptcy – If trustee terminates, licensee has choice of: • Treating as breach and seeking damages • Continuing to use (existing) IP and continuing to pay royalties Results. Value. Dykema. 31
  • 32. Bankruptcy Matters – Licensee Protections• Important limitations re Section 365(n) – Does not apply to trademarks – Does not apply to non-U.S. IP – Licensee will not have right to support, future developments, etc. Results. Value. Dykema. 32
  • 33. Bankruptcy Matters – Drafting Tips• Licensor: – Draft to emphasize personal nature (and prevent assignment by licensee) – Watch out for “consent not unreasonably withheld”• Licensee: generally wants to permit assignment, so include explicit permission Results. Value. Dykema. 33
  • 34. Joint Ownership of Developed IP Results. Value. Dykema. 34
  • 35. Joint Ownership – How Created• How created (under US law) – By agreement – Patent: any contributor to a patent claim owns a pro rata undivided interest in whole patent – even a 1% contributor will be a joint owner with full rights to use itself and to grant non-exclusive licenses – Copyright: contributor to “joint work” Results. Value. Dykema. 35
  • 36. Joint Ownership – The Problems• What did the parties really intend? – Actions to maintain value of the IP? – Who will prosecute applications? In what countries? – Who decides whether to keep as trade secrets or publish pursuant to a patent application? • Remember: Trade secret value generally destroyed by disclosure – Who will enforce rights against infringers? Results. Value. Dykema. 36
  • 37. Joint Ownership – The Problems• Applicable laws lead to different results for: – Different IP types – Different countries• Joint owners in different countries have different expectations Results. Value. Dykema. 37
  • 38. Example Problem #1: U.S. Patent Law• Exploitation (which includes granting non-exclusive licenses): – No permission required – No duty to share proceeds – Problem: race to offer best deal• Enforcement: – All owners must join suit – Problem: race to agree not to sue (e.g. grant a license) Results. Value. Dykema. 38
  • 39. Example Problem #1: U.S. Patent Law• Bottom Line: Each joint owner at the mercy of the others because easy to license (and reap the proceeds), but hard to sue infringers to protect the IP Results. Value. Dykema. 39
  • 40. Example Problem #2: Patents vs. Copyrights• Under U.S. law, each joint owner can fully exploit (including the right to grant non-exclusive licenses): – Patents: without permission or sharing of the proceeds – Copyrights: without permission, but with a duty to share proceeds• What happens with products that have both patent and copyright, such as software? Results. Value. Dykema. 40
  • 41. Example #3: Differing treatment among U.S.,U.K, Japan and Germany Patents – Right to Exploit By Co-owner By License to 3rd Party U.K. No Permission Need Permission [Similar to U.S.] [Different from U.S.] Japan / No Permission Need Permission Germany [Similar to U.S.] [Different from U.S.] Copyrights – Right to Exploit By Co-owner By License to 3rd Party U.K. Need Permission Need Permission [Different from U.S.] [Different from U.S.] Japan / Need Permission, cannot be Need Permission, cannot be Germany unreasonably withheld unreasonably withheld [Middle ground between U.S. [Middle ground between U.S. and U.K.] and U.K.] Results. Value. Dykema. 41
  • 42. Alternatives to Joint Ownership• Parties create a separate JV entity that owns the developed IP – Entity licenses parties and 3d parties – Management/ownership structures would govern – Good for complicated deals• Allocate ownership item by item in accordance with specified criteria – Need fair/ unambiguous criteria Results. Value. Dykema. 42
  • 43. Alternatives to Joint Ownership• Ownership allocated to one party and licensed to other – Good for complicated deals – Can be cleanest (i.e. best) solution• If you cannot avoid joint ownership, then you must be explicit in defining the joint owners’ rights to exploit and enforce rights• Address structural issues early Results. Value. Dykema. 43
  • 44. Conclusion• Be rigorous in your approach: – Address structural issues early – Watch out for sloppy thinking / language – Counsel is much more than a scrivener• Overarching goals: – To maximize value – To prevent surprises Results. Value. Dykema. 44
  • 45. Thank You Mark G. Malven Email: Phone: (248) 203-0517 Jeanne M. Whalen Email: Phone: (248) 203-0775 Value. Dykema. 45
  • 46. Licensing University Technologies University Technology Transfer Brian R. Copple Senior Licensing Specialist University of Michigan (734) 615-8965
  • 47. Agenda• Tech Transfer Concepts• The University Tech Transfer Office• Denizens of a TTO• U-M’s Tech Transfer Mission• Standard Activities / Assessment• How to interact with Tech Transfer• Shopping for Technologies
  • 48. Tech Transfer Concepts• Codified in Bayh-Dole Act (1980)• Federal Funding Drives Most University Research• Make Benefits Available to the Public• Encourage participation by small business• Promote collaboration between academia & industry• Share revenues with inventors and reinvest revenues into further research
  • 49. Technology Transfer Offices• TTO, OTT, OTM, TTL, TLO, TMO, etc.• Office of Vice President for Research or Finance Offices (depends on University)• Identify, Protect and License Inventions• Create/Support New Startup Companies• Manage IP-Related External Relations• Support Sponsored Contract Divisions• Educate Faculty & Staff• Professional, Experienced Staff• Accounting, Reporting Functions
  • 50. Denizens of a TTO• Large – 25 FTEs, 5-8 licensing/business formation staff• Small – 5 FTEs, 1-2 licensing/business formation Staff• Licensing, Marketing, Accounting, Legal, Support, (Startups)• Life or Physical Science Backgrounds• Technical, Business Experience• In-house legal review• Out-sourced patent counsel
  • 51. U-M Tech Transfer’s Mission:“To effectively transfer University technologies to the market while generating and providing resources to encourage research, education and service for the University, the community and the general public.”
  • 52. U-M Tech Transfer Process Research Research Pre-Disclosure Pre-Disclosure Licensing Licensing New Business New Business Invention Disclosure Invention Disclosure Formation Formation Assessment Assessment Protection Protection Marketing to Find or Form Licensee Marketing to Find or Form LicenseeExisting Business Existing Business Licensing Licensing Form Startup Business Form Startup Business Commercialization Commercialization Revenue Revenue
  • 53. Technology Assessment Science Business Business Science Business Business (MIRs) (MIRs) Licensing Specialist Legal Legal
  • 54. U-M Tech Transfer – FY12• Another solid year, especially given the economy – 368 inventions reported, up 14% and new record – 123 agreements, up 22% and new record • 24 exclusive licenses, up from 21 last year – 11 new business startups • 98 new startup ventures in last 10 years – $13.8 million in total revenues • Down 6% but missing largest licensee (legal dispute)• Growing recognition as valued University contributor
  • 55. U-M Tech Transfer Results Inventions Agreements 400 350 100 300 Number of AgreementsInvention Reports 250 200 50 150 100 50 0 0 2007 2008 2009 2010 2011 2012 Fiscal Year
  • 56. U-M Tech Transfer Revenues 40 Equity/Paid-up 35 Royalties Royalties 30Amount (Millions) 25 20 15 10 5 0 2007 2008 2009 2010 2011 2012* *Excludes $ from legal dispute Fiscal Year
  • 57. U-M Tech Transfer Startups 14 12 10 8Number Other 6 LSA 4 CoE 2 Med 0 2007 2008 2009 2010 2011 2012 Fiscal Year
  • 58. Why Work with U-M OTT?• Outstanding Innovations and Innovators Awaiting Your Help• Excellent Value for Money• Access to Technical & Business Expertise• Long-Term Relationships• Association with UM’s Strong Reputation• Experienced Business Professionals
  • 59. How To Work with U-M OTT• Process: – Find Technology/Collaborators – Assess Readiness Level – Option (?) – Sponsor Research (?) – License! – Maintain Ongoing Communication During License Term – Launch Products – Make Profit!
  • 60. Typical OTT Documents• Marketing Brochure• Nondisclosure Agreement• Patent Documentation• Option Agreement• License Agreement• Sponsored Research Agreement
  • 61. U-M Objectives in a License• Primary Goal: Making the technology available to the public• Milestones are included to verify diligence by licensee toward commercialization• U-M desires a fair commercial return; timing and form of the return can be tailored appropriately• Licensee must pay associated patent costs and costs of doing business (e.g., liability insurance, enforcing patents, etc.)
  • 62. U-M Venture Center
  • 63. U-M Venture Center Accelerator• Opened January 2011• Over 16,000 sq. ft. of office and lab space• 18 clients• 5 clients in the application cue• 70 employees• More than half of clients have expanded within first year• Inside University• 3 year maximum tenancy
  • 64. Shopping for Technologies• Websites: – (Physical Science & Medical) – (Physical Science & Medical) – (Physical Science & Medical) – (Medical) – (Automotive/Transportation)• Communicate with the Office – Introduce Yourself – Visit, Describe Areas of Interest – Periodic Follow-up Email/Calls• Target & Follow Researchers• Monitor Patents and Publications
  • 65. Questions?
  • 66. U-M Licensed Startups FY07 FY08 FY09 FY10 FY11 FY12 FlexSys* CytoPherx* Biotectix** HistoSonics* ChemXlerate* Lecture Tools* ImBio* Buck 80 ACSI* miRcore* Fusion Coolant* Spider 9* Seventh Sense Tangent Medical Avicennna* OtoMedicine* Ambiq Micro* Possibilities for Change Biosystems Technologies* Shepherd Intelligent Origio InflaRx GmbH OcuSciences* JBR Pharma* Pryor Medical Systems* Integrated Sensor Locomatix* Lycera* Crossbar* Nymirum* Diapin Therapeutics* Technologies Polaris Surgical Phrixus Sandbox Tech Civionics* Photolitec E-Sens Instruments Pharmaceuticals* Tissue Regeneration InfoMotion Sports Ascentage Pharma Biodiscovery* Umerse Baker-Calling* System* Technologies* Group Hearing Health Omni Science* Securus Medical CAMLA* Reveal Design Automation* Science* Vortex Hydro Arbor Photonics* Life Magnetics* Emergent Micro Systems* Energy* InCytu 3D Biomatrix* EFSolutions* Edington Associates* ePack* Csquared* AlertWatch* Sakti3* Armune Bioscience**/** indicates Michigan HQ (*) or office (**) Italics = ceased operations or returned technology