Commercialising IP by Research Institutions

299 views
236 views

Published on

A Presentation by Mr. Sandeep Hegde M.

Published in: Law
0 Comments
0 Likes
Statistics
Notes
  • Be the first to comment

  • Be the first to like this

No Downloads
Views
Total views
299
On SlideShare
0
From Embeds
0
Number of Embeds
2
Actions
Shares
0
Downloads
6
Comments
0
Likes
0
Embeds 0
No embeds

No notes for slide

Commercialising IP by Research Institutions

  1. 1. IP Commercialisation by Research Institutions Sandeep Hegde M. BananaIP
  2. 2. Objectives of Commercialization • Reaching Public Funded R&D to People • Meeting Expectations of the Public • Fund Raising for further research • Working of Patents
  3. 3. Achievement Means Licensing Assignment/Sale Public Private Partnerships Start up Collaboration Publications
  4. 4. Statistics from USA (Source: Current Science) Year Investment (in million USD) Inventions Disclosed Patents Filed Licenses Issued 2009 53560 20184 11961 4347 2008 51205 20020 12153 4125 2007 48603 19740 11749 4323 2006 45062 18792 11583 4176 2005 42052 17315 10236 4140
  5. 5. Top Research Institutes in India • Center for Scientific and Industrial Research (CSIR) • Central Food Technology Research Institute (CFTRI), Mysore • Indian Institute of Technology (IIT), Bombay • Indian Council for Medical Redearch, ICMR
  6. 6. Necessary Infrastructure • IP Policy and Process • Structured Approach to Protecting IP • Dedicated Technology Transfer Offices (TTOs) • Other Supporting Systems
  7. 7. What is a license? Termination Performance & other obligations Terms of exploitation Grant of exploitation right
  8. 8. Licensing Transactions • In Licensing- – Taking exploitation rights from another person/entity – You are the ‘Licensee’ • Out Licensing- – Giving exploitation rights to another person – You are the ‘Licensor’
  9. 9. Licensing Opportunities Patent Portfolio > Single Patent Quality of Patent Strength of the Invention • Relevance • Shelf life • Competing technology Strength of the Patent • Strength of the Claims • Quality of Prosecution Assessment of Quality Patent Validation and strength analysis Valuation Negotiation
  10. 10. Types of Licenses Exclusive Sole Non-Exclusive Only the Licensee has the right to exploit Both the Licensee and the Licensor have the right to exploit Multiple Licensees may exist at the same time
  11. 11. Nature of License • Perpetual/Limited in term • Revocable/Irrevocable • Royalty/Royalty free • Entire World/Limited in Territory
  12. 12. Grant clause – Enlists the exploitation rights provided – Enumerates the restrictions on the exploitation – Usually provides specific exclusions on what rights are not given – Nature and type of license can be deciphered from this clause E.g. X Grants Y a non-exclusive, irrevocable, royalty free license to use the tools developed during the R&D conducted by X for Y during the term of this agreement.
  13. 13. Performance Obligations • Per Market Entry Milestones- to reach market entry point E.g.: Production of prototype; Undertaking a trial Meeting regulatory requirements • Sales Targets- post market entry E.g.: Minimum Guarantee Quantum • Quality Control
  14. 14. Term & Termination • Term should be clearly mentioned • Types of termination- – Convenience – Mutual – Breach – Conditional – Operation of Law • Post termination obligations – Residual obligations – Destruction/return of IP – Certificate of destruction – Maintain confidentiality
  15. 15. Royalty Lump sum Continuing royalty Mixed Royalty Upfront Minimum Guarantee Share of Gross/Net Revenue Fixed periodic royalty
  16. 16. INDEMNITY • One of the most negotiated clauses • Compensation for damages or loss • Inherent IP violation risk vis a vis IP risk due to usage by Licensee • Attorney Costs!
  17. 17. Governing Law & Jurisdiction • Governing Law – Choice of law – May be mutually agreed – Laws of which jurisdiction will govern the interpretation • Jurisdiction – Choice of forum – Courts of a specific country • Arbitration & other ADR clauses
  18. 18. THANK YOU. Web: www.bananaip.com Blog: http://www.bananaip.com/sinapse-blog A Property of BananaIP

×