This document summarizes a presentation on technology licensing given by Mark Malven and Jeanne Whalen of Dykema law firm. It discusses the basic concepts of technology and intellectual property licensing, including the anatomy of license agreements, financial terms, ownership issues, and special considerations around bankruptcy and change of control. Key topics covered include the differences between assignments and licenses, exclusive vs non-exclusive licenses, royalty structures, handling improvements and enforcement rights, and dealing with joint ownership of intellectual property. The presentation provides an overview of important legal and business issues to consider for technology licensing agreements.
April 2011 - Business Law & Order - Mark G. MalvenAnnArborSPARK
This is the much anticipated sequel to SPARK’s smash hit IP–1 session last Fall. In this installment, we have assembled a star-studded cast of IP experts to discuss the ins and outs of licensing intellectual property (IP), as well as a “best practices” approach to avoiding the dreaded “cease & desist” letter from a competitor. Matt Bell from the UofM Tech Transfer Office will talk about the many opportunities that exist for entrepreneurs to acquire cutting edge technology from universities, and to engage university researchers to solve specific technical problems. Attorney Mark G. Malven will cover IP licensing for entrepreneurs. Attorney Richard (Rick) Hoffmann will share ways that startups and emerging businesses can reduce the risk of infringing third-party IP rights.
Successful Strategies for IP Due Diligencejrstorella
The document discusses strategies for preparing for intellectual property (IP) due diligence by potential investors. It recommends resolving freedom to operate issues, building a strong IP portfolio, cleaning up title to IP, negotiating solid license agreements, and organizing the IP portfolio. Conducting thorough freedom to operate analyses and having explanations prepared for any problematic patents is key. The document emphasizes excluding competitors through broad patent claims and focusing on enforceability. It also stresses having clean and complete title to all IP.
The Intersection of Bankruptcy and... IP Law (Series: Bankruptcy Intersection...Financial Poise
Intellectual property generally includes patent rights, copyright rights, trademark and servicemark rights, and trade secrets. The foundation of intellectual property law is the protection of exclusive rights afforded to original works and invention. These rights can be significantly impacted by bankruptcy proceedings. This webinar examines some of these key issues including the perfection of security interests in intellectual property, the protection of certain intellectual property licenses and lack of protection for other types of intellectual property, the relief available to licensors, as well a special issues regarding assignment of licenses in bankruptcy proceedings.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/bankruptcy-and-ip-law-2020/
It all starts with an epiphany. Every invention begins with a single “eureka moment” or some “brilliant revelation” that causes the inventor to take action.
These epiphanies become the idea seeds planted by inventors around the world. But we can only wish the process was as simple as adding water and fertilizer and waiting for the ideas to spring to life.
Inventions are not just patents to be hung on a wall. They are the starting point for a new business enterprise. So, not only does the inventor have to figure out how to create a working product or device, they also have to drive it forward, creating a business model that will enable it to survive. And that’s where we come in.
The Inventor Boot Camp will help you focus on what’s important. We will show you ways to leverage your time and resources, eliminate unnecessary work, and direct your energies towards driving your product forward. And most importantly, we will teach you what it takes to become successful.
Key Strategies to Learn
How to perform an early stage benefit/market analysis to decide in advance who your end customer will be. Once you fully understand who your customer is, only then can you begin to piece together your business model.
How to develop a profit-centric mindset, the same thinking used by most successful inventors, to maximize your odds of success.
How to decide if your invention needs to be patented. If it doesn’t, this can save you significant amounts of money.
Who you should be listening to. Advice will come from many sources, but not all of it will be good.
How to best position yourself for funding. Hear it directly from the people who have money to invest.
The document discusses intellectual property, focusing on trade secrets. It defines trade secrets, provides examples of information that can be considered trade secrets, and outlines best practices for establishing and protecting trade secrets, such as conducting a trade secret audit, appointing a compliance officer, using non-disclosure agreements, and monitoring compliance. Trade secrets offer perpetual protection as long as secrecy is maintained, but providing no exclusivity and being more difficult to enforce than patents.
A presentation on cloud computing and its impact in the boardroom. Presented to the Australian Institute of Company Directors , this presentation covers:
1. What legal contracts and provisions should be put in place for IT?
2. Liability issues – what insurance do you need?
3. Privacy obligations and protecting data – key legislation and its application
Brendon Noney
April 2011 - Business Law & Order - Mark G. MalvenAnnArborSPARK
This is the much anticipated sequel to SPARK’s smash hit IP–1 session last Fall. In this installment, we have assembled a star-studded cast of IP experts to discuss the ins and outs of licensing intellectual property (IP), as well as a “best practices” approach to avoiding the dreaded “cease & desist” letter from a competitor. Matt Bell from the UofM Tech Transfer Office will talk about the many opportunities that exist for entrepreneurs to acquire cutting edge technology from universities, and to engage university researchers to solve specific technical problems. Attorney Mark G. Malven will cover IP licensing for entrepreneurs. Attorney Richard (Rick) Hoffmann will share ways that startups and emerging businesses can reduce the risk of infringing third-party IP rights.
Successful Strategies for IP Due Diligencejrstorella
The document discusses strategies for preparing for intellectual property (IP) due diligence by potential investors. It recommends resolving freedom to operate issues, building a strong IP portfolio, cleaning up title to IP, negotiating solid license agreements, and organizing the IP portfolio. Conducting thorough freedom to operate analyses and having explanations prepared for any problematic patents is key. The document emphasizes excluding competitors through broad patent claims and focusing on enforceability. It also stresses having clean and complete title to all IP.
The Intersection of Bankruptcy and... IP Law (Series: Bankruptcy Intersection...Financial Poise
Intellectual property generally includes patent rights, copyright rights, trademark and servicemark rights, and trade secrets. The foundation of intellectual property law is the protection of exclusive rights afforded to original works and invention. These rights can be significantly impacted by bankruptcy proceedings. This webinar examines some of these key issues including the perfection of security interests in intellectual property, the protection of certain intellectual property licenses and lack of protection for other types of intellectual property, the relief available to licensors, as well a special issues regarding assignment of licenses in bankruptcy proceedings.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/bankruptcy-and-ip-law-2020/
It all starts with an epiphany. Every invention begins with a single “eureka moment” or some “brilliant revelation” that causes the inventor to take action.
These epiphanies become the idea seeds planted by inventors around the world. But we can only wish the process was as simple as adding water and fertilizer and waiting for the ideas to spring to life.
Inventions are not just patents to be hung on a wall. They are the starting point for a new business enterprise. So, not only does the inventor have to figure out how to create a working product or device, they also have to drive it forward, creating a business model that will enable it to survive. And that’s where we come in.
The Inventor Boot Camp will help you focus on what’s important. We will show you ways to leverage your time and resources, eliminate unnecessary work, and direct your energies towards driving your product forward. And most importantly, we will teach you what it takes to become successful.
Key Strategies to Learn
How to perform an early stage benefit/market analysis to decide in advance who your end customer will be. Once you fully understand who your customer is, only then can you begin to piece together your business model.
How to develop a profit-centric mindset, the same thinking used by most successful inventors, to maximize your odds of success.
How to decide if your invention needs to be patented. If it doesn’t, this can save you significant amounts of money.
Who you should be listening to. Advice will come from many sources, but not all of it will be good.
How to best position yourself for funding. Hear it directly from the people who have money to invest.
The document discusses intellectual property, focusing on trade secrets. It defines trade secrets, provides examples of information that can be considered trade secrets, and outlines best practices for establishing and protecting trade secrets, such as conducting a trade secret audit, appointing a compliance officer, using non-disclosure agreements, and monitoring compliance. Trade secrets offer perpetual protection as long as secrecy is maintained, but providing no exclusivity and being more difficult to enforce than patents.
A presentation on cloud computing and its impact in the boardroom. Presented to the Australian Institute of Company Directors , this presentation covers:
1. What legal contracts and provisions should be put in place for IT?
2. Liability issues – what insurance do you need?
3. Privacy obligations and protecting data – key legislation and its application
Brendon Noney
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2020/
This document provides an overview of copyright and key terms in IT contracts. It begins with an introduction to intellectual property and different types of IP protections. It then discusses common copyright problems that can arise, such as misunderstanding the scope of rights granted in a software license. The document also covers important contract terms for various types of IT agreements, such as those related to development, licensing, services, pricing, and limitations on liability. Key considerations for contract terms like ownership, IP licenses, and warranties are also outlined.
Buying & Selling IP (Series: Intellectual Property 201)Financial Poise
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2021/
Presentation given to the Chicago Lean Startup Circle on Dec. 1, 2011.
In a lean startup, getting product-to-market-fit is everything. Along the way, consider core IP issues to make sure your startup owns all of the value that you are adding. You can also have lean IP, just make sure you fully understand the implication of bootstrapping.
As always, consult with a lawyer if you have questions or concerns.
Kko ip due diligence presentation (digital boot camp) 2016-02-17(2)Arlen Meyers, MD, MBA
This document provides an overview of intellectual property due diligence for an acquisition. It discusses timing considerations for IP due diligence and its purpose in assessing ownership, protection/liability issues, and freedom to operate. The document outlines factors that influence the scope of diligence, such as the type of investor and nature of the target's business. It also describes assessing ownership of IP assets, prior agreements, validity/strength of IP, and potential liability issues. The document concludes with discussing how to structure representations and warranties, disclosure schedules, post-closing covenants, and indemnification provisions to protect against liability.
This document summarizes key information about intellectual property (IP) ownership and common IP issues. It discusses the main types of IP - copyrights, trademarks, and patents. For each it provides examples of common problems like unclear licensing terms, failure to register trademarks, and missed patent deadlines. The document aims to help people understand IP rights and avoid infringement claims by clarifying ownership upfront.
AZCI Commercial Reality Start Up Session Protecting And Managing Your Intel...sdgarrison
The document provides information on intellectual property protection for startup companies, including types of intellectual property like patents, trademarks, and trade secrets; developing an IP portfolio and valuation methods; and strategies for protecting trade secrets through policies, agreements, and security measures.
A Step By Step Guide To Growing A Technology Business The Legal Aspects O...lisaabe
Whether you are an entrepreneur or an investor, this presentation sets out the legal and business framework on How to Grow Your Technology Business into a profitable success!
The document outlines the top 10 intellectual property mistakes made by emerging companies, including failing to properly assign intellectual property rights to contractors, not filing patent applications within statutory deadlines, and underestimating the importance of freedom to operate analyses and trademark registrations to protect the value of a company's innovations and brand. It emphasizes the need for startups to develop an intellectual property strategy and budget that focuses on commercially valuable intellectual property and properly establishes ownership of employee and contractor work.
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
Part of the webinar series: INTELLECTUAL PROPERTY 201 - 2022
See more at https://www.financialpoise.com/webinars/
The document discusses setting up business in a foreign country. It notes that typical motivations include accessing new economic opportunities, resources, markets, and synergies. Key considerations for foreign markets include intellectual property laws, ownership rules, financial regulations, tax regimes, immigration laws, and business rules. The document outlines legal forms for foreign operations such as subsidiaries, branch offices, joint ventures, distribution, agencies, and licensing. It stresses researching individual country and business factors to select the proper legal structure.
The Economics of Patent Litigation & Damages Brian BussBrian Buss
Presentation by Brian Buss of Nevium at the 2017 International Intellectual Property Law Association (IIPLA) Annual Meeting in Silicon Valley covering damages calculations in patent infringement litigation
Flight WEST 2018 Presentation - A Buyer Investor Playbook for Successfully Na...Black Duck by Synopsys
Anthony Decicco, shareholder, GTC Law Group presented at FLIGHT West 2018. His session description included:
A buyer and investor focused discussion of key open source software-related issues and deal points. Understanding the key legal and technical risks, as well as strategies for mitigating them, will help you to focus due diligence, speed and smooth negotiations and get better deal terms, increasing overall value and avoiding post-transaction surprises.
For more information, please visit us at www.blackducksoftware.com
IP Outsourcing Problems... Tanenbaum, wtanenbaum@kayescholer.com Kaye Schole...William Tanenbaum
This document discusses 10 common intellectual property issues that can arise in information technology outsourcing and cloud computing arrangements. These issues include determining ownership of work product, properly assigning intellectual property rights, managing joint ownership of collaborative work, ensuring appropriate scope of licensing rights, crafting effective indemnification provisions, and protecting customer information and data. The document provides analysis and potential solutions for addressing each issue.
This document discusses various options for companies facing financial difficulties, including asset sales, wind downs, recapitalizations, and dissolution. It notes the pros and cons of asset sales versus multiple asset deals. For recapitalizations, it outlines the mechanics and key considerations around fairness issues. Wind downs require preparing financial projections both with and without going concern assumptions. Directors and officers could face personal liability for unpaid wages, taxes, and other obligations. The document provides a sample checklist for winding down a company and emphasizes the importance of clear communication with all stakeholders throughout the process.
Winning the Cage-Match: How to Successfully Navigate Open Source Software iss...Black Duck by Synopsys
A blow-by-blow discussion of key open source software-related issues and deal points from the point of view of buyer/investor vs. seller/investee. Understanding the key legal and technical risks, as well as strategies for mitigating them, will help you to speed and smooth negotiations, avoid protracted due diligence and get better deal terms, increasing overall value.
This document provides guidance on avoiding procuring intellectual property (IP) when doing procurement. It discusses:
1) Different IP rights that can apply simultaneously, such as patents, copyrights, and trademarks.
2) Using agreements as an "early warning system" to specify deliverables, IP ownership, and audit rights to prevent issues around customized work and subcontractors.
3) Recommendations for indemnities, damages, joint IP ownership, and protecting customer IP in outsourcing and cloud computing arrangements.
The Intersection of Bankruptcy and… Intellectual Property Law (1).pdfFinancial Poise
Intellectual property generally includes patent rights, copyright rights, trademark and service mark rights, and trade secrets. The foundation of intellectual property law is the protection of exclusive rights afforded to original works and invention. These rights can be significantly impacted by bankruptcy proceedings. This webinar examines some of these key issues including the perfection of security interests in intellectual property, the protection of certain intellectual property licenses and lack of protection for other types of intellectual property, the relief available to licensors, as well as special issues regarding assignment of licenses in bankruptcy proceedings.
Part of the webinar series: BANKRUPTCY INTERSECTIONS 2022
See more at https://www.financialpoise.com/webinars/
Licensing allows a company to generate revenue from its intellectual property while another entity uses the IP under agreed terms. The owner of the IP retains ownership and controls how the IP is used through the license agreement. Key terms of a license include exclusivity, territory, royalty payments, minimum royalties, and termination clauses. Licensing has advantages like immediate revenue, risk reduction, and accessing new markets. However, licenses can increase product expenses and require ongoing development work from the licensor. Proper negotiation and drafting of the license agreement is important for success.
Selling Smart - June 3, 2015 - How to keep your 6-year-old and your mother ou...AnnArborSPARK
The document summarizes an upcoming workshop on selling smartly and keeping personal issues out of sales. The workshop will be led by representatives from Sandler Training Ann Arbor, U.S. Water, and Blue Chip Cleaning Services. It will cover how a person's ego states developed in childhood can negatively influence their selling. It will include a panel Q&A and exercises on transactional analysis and identifying critical parent statements versus what should be said. The goal is to provide practical sales tactics in an encouraging and non-embarrassing way.
Michigan Marketing Minds - May 19, 2015AnnArborSPARK
This document discusses marketing strategies for different languages and cultures. It notes that the South Tyrol region of Italy is bilingual in Italian and German, with bilingual signs and a bilingual city of Bressanone. While getting pizza, the author struggled to communicate effectively due to language barriers, highlighting the importance of understanding audience, core message, language, and context when marketing to different cultures.
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IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
To listen to this webinar on-demand, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2020/
This document provides an overview of copyright and key terms in IT contracts. It begins with an introduction to intellectual property and different types of IP protections. It then discusses common copyright problems that can arise, such as misunderstanding the scope of rights granted in a software license. The document also covers important contract terms for various types of IT agreements, such as those related to development, licensing, services, pricing, and limitations on liability. Key considerations for contract terms like ownership, IP licenses, and warranties are also outlined.
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To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/buying-selling-ip-2021/
Presentation given to the Chicago Lean Startup Circle on Dec. 1, 2011.
In a lean startup, getting product-to-market-fit is everything. Along the way, consider core IP issues to make sure your startup owns all of the value that you are adding. You can also have lean IP, just make sure you fully understand the implication of bootstrapping.
As always, consult with a lawyer if you have questions or concerns.
Kko ip due diligence presentation (digital boot camp) 2016-02-17(2)Arlen Meyers, MD, MBA
This document provides an overview of intellectual property due diligence for an acquisition. It discusses timing considerations for IP due diligence and its purpose in assessing ownership, protection/liability issues, and freedom to operate. The document outlines factors that influence the scope of diligence, such as the type of investor and nature of the target's business. It also describes assessing ownership of IP assets, prior agreements, validity/strength of IP, and potential liability issues. The document concludes with discussing how to structure representations and warranties, disclosure schedules, post-closing covenants, and indemnification provisions to protect against liability.
This document summarizes key information about intellectual property (IP) ownership and common IP issues. It discusses the main types of IP - copyrights, trademarks, and patents. For each it provides examples of common problems like unclear licensing terms, failure to register trademarks, and missed patent deadlines. The document aims to help people understand IP rights and avoid infringement claims by clarifying ownership upfront.
AZCI Commercial Reality Start Up Session Protecting And Managing Your Intel...sdgarrison
The document provides information on intellectual property protection for startup companies, including types of intellectual property like patents, trademarks, and trade secrets; developing an IP portfolio and valuation methods; and strategies for protecting trade secrets through policies, agreements, and security measures.
A Step By Step Guide To Growing A Technology Business The Legal Aspects O...lisaabe
Whether you are an entrepreneur or an investor, this presentation sets out the legal and business framework on How to Grow Your Technology Business into a profitable success!
The document outlines the top 10 intellectual property mistakes made by emerging companies, including failing to properly assign intellectual property rights to contractors, not filing patent applications within statutory deadlines, and underestimating the importance of freedom to operate analyses and trademark registrations to protect the value of a company's innovations and brand. It emphasizes the need for startups to develop an intellectual property strategy and budget that focuses on commercially valuable intellectual property and properly establishes ownership of employee and contractor work.
IP rights are an important class of intangible assets that can be assigned or licensed to generate revenue. Indeed, some companies do not make or sell products; their entire revenue is derived from the licensing of their patents. Suffice it to say, licensing revenue has become a significant source of value in the global intellectual property economy. This webinar will help you better understand the complex legal issues associated with IP transactions.
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See more at https://www.financialpoise.com/webinars/
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For more information, please visit us at www.blackducksoftware.com
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This document discusses 10 common intellectual property issues that can arise in information technology outsourcing and cloud computing arrangements. These issues include determining ownership of work product, properly assigning intellectual property rights, managing joint ownership of collaborative work, ensuring appropriate scope of licensing rights, crafting effective indemnification provisions, and protecting customer information and data. The document provides analysis and potential solutions for addressing each issue.
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Winning the Cage-Match: How to Successfully Navigate Open Source Software iss...Black Duck by Synopsys
A blow-by-blow discussion of key open source software-related issues and deal points from the point of view of buyer/investor vs. seller/investee. Understanding the key legal and technical risks, as well as strategies for mitigating them, will help you to speed and smooth negotiations, avoid protracted due diligence and get better deal terms, increasing overall value.
This document provides guidance on avoiding procuring intellectual property (IP) when doing procurement. It discusses:
1) Different IP rights that can apply simultaneously, such as patents, copyrights, and trademarks.
2) Using agreements as an "early warning system" to specify deliverables, IP ownership, and audit rights to prevent issues around customized work and subcontractors.
3) Recommendations for indemnities, damages, joint IP ownership, and protecting customer IP in outsourcing and cloud computing arrangements.
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Licensing allows a company to generate revenue from its intellectual property while another entity uses the IP under agreed terms. The owner of the IP retains ownership and controls how the IP is used through the license agreement. Key terms of a license include exclusivity, territory, royalty payments, minimum royalties, and termination clauses. Licensing has advantages like immediate revenue, risk reduction, and accessing new markets. However, licenses can increase product expenses and require ongoing development work from the licensor. Proper negotiation and drafting of the license agreement is important for success.
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2. The Keys to Technology Licensing
Ann Arbor SPARK: Business Law & Order Series
January 16, 2012
Mark G. Malven,
Jeanne M. Whalen
Results. Value. Dykema.
www.dykema.com
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
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
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
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: mmalven@dykema.com
Phone: (248) 203-0517
Jeanne M. Whalen
Email: jwhalen@dykema.com
Phone: (248) 203-0775
www.dykema.com/techtrans
Results. Value. Dykema. 45
46. Licensing University Technologies
University Technology Transfer
Brian R. Copple
Senior Licensing Specialist
University of Michigan
copplebr@umich.edu
(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 Licensee
Existing 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 Agreements
Invention Reports
250
200
50
150
100
50
0 0
2007 2008 2009 2010 2011 2012
Fiscal Year
57. U-M Tech Transfer Startups
14
12
10
8
Number
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!
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.)
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:
– http://inventions.umich.edu/ (Physical Science & Medical)
– http://gtp.autm.net/ (Physical Science & Medical)
– http://www.ibridgenetwork.org/ (Physical Science & Medical)
– http://www.ctsaip.org/ (Medical)
– http://www.autoharvest.org/ (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