www.securedocs.com- Slides for the webinar, "The Art of the Deal," presented by SecureDocs and Peter Weinstein of One3IP Management. Covers first steps and strategies for negotiating licensing deals, research and collaboration agreements, and other types of partnerships.

1. The
Art
Of
The
Deal

2. About
SecureDocs
• SecureDocs
is
a
virtual
data
room
for
sharing
and
storing
sensi8ve
documents
both
internally
and
with
outside
par8es.
Company
Basics:
• Founded
by
the
team
that
created
and
launched
GoToMyPC
and
GoToMee>ng
• Backed
by
leading
technology
companies
and
investors
• Web-­‐based
business
soDware
for
financial
and
legal
professionals

3. About
Peter
Weinstein,
Ph.D,
J.D.
Ø Nearly
a
decade
as
a
scien>st
post
Ph.D.,
including
>me
at
NIH,
USAMRIID
and
as
a
Sr.
Scien>st
at
ImmuCell
Ø Former
Patent
Examiner
at
the
USPTO
Ø Over
a
decade
in
private
prac>ce
as
a
patent
and
general
civil
li>gator,
patent
prosecutor
and
licensing
aSorney
Ø Six
years
at
Baxter
Healthcare
(Sr.
Counsel,
IP)
Ø Founder
and
current
CEO
of
One3
IP
Management

4. About
One3
IP
Management
Ø One3
IP
Management
is
an
intellectual
property
management
company
that
acts
as
your
in-­‐house
IP
counsel
handling
all
of
your
company’s
IP,
licensing
and
other
legal
needs.
Ø One3
IP
views
its
clients
as
partners
and
does
not
nickel
and
dime
them
for
every
task,
but
works
with
its
clients
in
a
cost
effec>ve
manner
that
allows
One3
IP
to
learn
and
stay
abreast
of
its
clients
current
and
future
business
needs
and
goals.
Ø One3
IP
does
not
follow
the
status
quo
in
building
its
clients
value
through
the
obtainment
of
a
broad
patent
porZolio
and
the
protec>on
of
its
clients
trade
secrets,
but
has
developed
novel
methods
that
are
cost
effec>ve
and
result
in
an
IP
porZolio
that
provides
broad
protec>on

5.
Form
of
the
Deal
Ø Types
of
Deals
that
will
be
discussed
today
Ø License
Agreement
Ø Sales
Agreement
Ø Collabora>on
Agreement
Ø Research
and
Development
Agreement

6. Today’s
Goals
Ø Provide
the
steps
you
may
want
to
consider
when
preparing
to
nego>ate
and
draD
a
license
agreement
Ø Not
terms
as
these
are
deal
specific
Ø Provide
from
my
experience
some
of
the
do’s
and
don’t’s
of
license
nego>a>on
I
have
learned
over
the
years
Ø Provide
examples
of
issues
created
by
poor
licensing
prac>ces
Ø Provide
examples
of
success
stories

7. Deal
Prepara>on
Ø Prepara>on
is
the
key
to
success
Ø Iden>fy
best
partners
to
accomplish
your
goal
Ø Iden>fy
individuals
to
contact
Ø How
to
find:
Ø Referral
Ø LinkedIn
Ø Internet
search

8. Deal
Prepara>on
Ø Determine
what
you
are
willing
to
give
up
Ø Make
sure
it
meets
your
business
needs
Ø Make
sure
you
can
live
with
the
term
Ø What
are
you
looking
to
receive?
Ø If
you
are
providing
something,
what
do
you
want
in
return?
Ø Form
of
compensa>on
Ø Cash,
Royalty,
Shares,
Other
Ø What
is
a
reasonable
amount?
Ø What
will
the
market
bear?
Ø Comparables

9. Deal
Prepara>on
Ø Timing
of
nego>a>on-­‐
When
do
you
need
a
deal
completed?
Ø Strength
of
partner
Ø Catch
them
when
they
are
weakest
Ø Complex
deals
can
take
6
months
to
a
year
from
start
to
finish
Ø Factor
in
a
real
>meline
to
complete

10. A
Deal
is
Like
a
Marriage…
It
can
be
great
or
it
can
be…

11. First
Contact
Ø How
do
you
start?
Ø Who
is
the
decision
maker?
Ø Who
makes
contact?
Ø You
Ø Unaffiliated
third
party

12. First
Contact
Ø What
do
you
say?
Ø Only
as
much
as
need
to
disclose
Ø Too
many
words
can
cost
you
Ø How
to
present
yourself
Ø First
impressions
Ø Always
act
professionally
Ø Your
presenta>on
can
affect
how
you
are
treated
and
what
you
will
receive

13. The
Game
Begins
Ø How
do
you
start?
Ø Term
sheet
Ø DraD
agreement
Ø Who
provides
the
first
offer
of
terms?
Ø First
shot
Ø Cost
Ø Experience

14. Game
On
Ø Always
nego>ate
based
on
a
posi>on
of
strength
Ø Never
show
weakness
Ø But
don’t
be
obnoxious
Ø Don’t
be
afraid
to
ask
for
“too
much”
Ø You
can
always
give
up
territory
Ø If
possible,
let
the
other
side
provide
the
first
offer
on
key
terms

15. Game
On
Ø Strategy
for
nego>a>on
and
draDing:
Ø Never
lose
your
cool
Ø Need
to
stay
in
control
Ø This
is
a
business
deal,
emo>on
should
not
enter
the
equa>on
Ø You
are
about
to
enter
a
“marriage”
Ø Respect
Ø Think
from
the
point
of
view
of
the
other
side
Ø Listen
to
what
they
ask
for
Ø Listen
to
what
they
say
Ø This
evalua>on
should
be
con>nual

16. Game
On
Ø Strategy
for
nego>a>on
and
draDing:
Ø Pa>ence
Ø Don’t
rush
to
get
a
deal
completed
Ø Communica>on
between
the
par>es
Ø Telephone
v.
Skype
v.
Face-­‐to-­‐Face
Ø F2F
at
start
and
finish
Ø Transfer
of
informa>on
Ø CDA
Ø Documents
Ø Email
v.
Dropbox
v.
SecureDocs

17. Game
On
Ø Strategy
for
nego>a>on
and
draDing:
Ø Don’t
blink
Ø The
biggest
issue
is
always
when
to
give
in
on
a
term
Ø You
can
always
concede
territory
later
Ø The
95
out
of
a
100
rule
Ø Never
let
on
what
really
maSers
to
you
Ø Lose
a
baSle
but
win
the
war
Ø At
the
same
>me
making
the
other
side
feel
like
they
won

18. Example
#
1
Ø Wanted
to
outlicense
IP
rights
and
Product
Line
Ø Licensee
Ø Lacked
consensus
Ø Unreasonable
expecta>ons
Ø Distrust
Ø Licensor
Ø Uncommunica>ve
Ø Former
Employee
trying
to
blow
up
deal
Ø Reached
out
to
Licensor
and
agreed
to
work
together
Ø Convinced
Licensee
one
decision
maker
and
term
floor
Ø Deal
exceeded
floor
and
both
par>es
received
what
they
wanted

19. Example
#
2
Ø Wanted
to
retain
IP
rights
if
collabora>on
failed
Ø Tough
partner
to
deal
with
who
always
asked
for
too
much
Ø Waited
un>l
partner
suffered
financial
issues
Ø Approached
partner
with
license
offer
for
IP
Ø Partner
agreed
Ø Partner
wanted
to
limit
scope
of
IP
Ø Provided
partner
guarantee
of
money
for
a
defined
period
of
>me
Ø Obtained
all
IP
rights

20. Q&A
SecureDocs
Virtual
Data
Room
50
Cas>lian
Drive
Goleta,
CA
93117
Phone:
(866)
700-­‐7975
info@securedocs.com
sales@securedocs.com
www.securedocs.com
@SecureDocsVDR
One3IP
Management
1560-­‐1
Newbury
Road,
#327
Newbury
Park,
CA
91320
Phone:
(800)
478-­‐2152
info@one3ip.com
peter_weinstein@one3ip.com
www.one3ip.com
@one3ip