The role of intellectual property. Commercialization methods. Licensing. Overview of a licensing agreement. Commercialization case study.

1. June 21, 20181
IP Commercialization Workshop
Jay Erstling & Denise Kettelberger
October 16, 2017
The Role of Intellectual Property
Commercialization methods
Licensing
Overview of a license agreement
Commercialization Case Study

2. © 2017 Patterson Thuente Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
IP Commercialization
Workshop
Jay Erstling
Denise Kettelberger

3. Outline
Why are we talking?
Commercialization methods
Licensing
Overview of a license agreement
June 21, 20183

4. Why are we talking?
Role of IP
What’s your commercialization story?
Different scenarios
Initial stages
Non-disclosure
Provisional protection
Funding – Where is the money coming from?
The end game
June 21, 20184

5. Commercialization Methods
Who owns the IP?
Manufacture and sell product?
Assign the IP?
Franchise?
License?
Out, in, or cross?
Exclusive/non-exclusive, field of use, geographic
scope
June 21, 20185

6. Licensing
Why license?
Advantages and disadvantages for licensor/licensee
Prepare to license
Finding licensing partners
Non-disclosure/confidentiality agreements
Due diligence
Valuation
Negotiating the license agreement
June 21, 20186

7. Overview of a License Agreement
Key terms – Extent of rights
Defining the IP
Exclusive, sole or non-exclusive
Most favored licensee
Ability to sub-license
Improvements
Technical assistance and know-how
Term
June 21, 20187

8. Overview of a License Agreement
Key terms – Commercial and financial
Payments
Reporting and accounting
Patent infringement
Product liability
Quality control
June 21, 20188

9. Overview of a License Agreement
Key terms – general considerations
Representations and warranties
Licensor/licensee obligations
Force majeure
Anti-competitive practices
Government regulations
Dispute resolution
Expiration and termination
June 21, 20189

10. Commercialization Case Study
Indico Co. Ltd (Mumbai) invented a new method for
coating microscopic components. Chemical Formulations
Inc. (Florida) would like to have an assignment of the
invention or at least worldwide exclusive rights for certain
product applications.
June 21, 201810

11. Questions?
Jay Erstling | erstling@ptslaw.com
Denise Kettelberger | kettelberger@ptslaw.com
June 21, 201811