For many modern, high-technology companies, licensing their technology-based intellectual property assets is the best way to fully exploit them. Firms that are unable to utilize their proprietary technology assets can license them to other companies more capable of doing so. This book serves as an informed and comprehensive guide to developing a technology licensing program and the legal hurdles, operational needs, and strategies involved.
Suitable for companies seeking to implement or redesign a technology licensing program, as well as individual inventors who want to protect and profit from their proprietary technology, Technology Management covers all the bases.
Develop a licensing strategy
Conduct proper valuations of intellectual property
Gather and utilize market research
Market your technology
Negotiate and draft licensing agreements
Utilize these handy resources:
Glossary of important terminology
Case studies and sample documents
Lists of organizations, publications, trade shows, and other helpful sources of information
1 To License or Not to License . . .
Technology Management Strategies.
Types of Licensing.
What to Do after Deciding to License.
2 Intellectual Property.
Requirements for Patenting.
Factors in Determining Whether to Patent.
Using Trademarks in Technology Licensing.
Protecting Mask Works.
Intellectual Property Management.
Auditing Intellectual Property.
Developing an IP Strategy.
3 Researching the Market.
Companies and Products in the Market.
Sources of Information.
Online and Subscription Services.
Trade Associations and Shows.
Preparing the Data.
Organizing the Raw Data.
Uses for Market Information.
Internal and External Contacts.
4 Technology Valuation.
The 3% to 5% Rule.
Using Discounted Cash Flow to Calculate Net Present Value.
Net Revenue Amounts.
Timing of Payments.
Net Present Value Calculation.
5 Licensing Strategies.
Developing a Licensing Strategy.
Improvements and Continuity.
Additional Licenses Required.
Market and Territorial Restrictions.
Warranties, Indemnification, and Liability.
Anti-trust/Restraint of Trade.
Licensing from Universities.
Characteristics of University Licensing.
Licensing from the U.S. Government
Advanced Techniques?Corporate Licensing.
Types of Products.
Implementing a Corporate Licensing Program.
6 Technology Marketing.
Factors Affecting Marketability.
Stage of Development.
Understanding the Market.
Developing a Marketing Strategy.
Targeting Prospective Partners.
Defining the Process.
Contacting the Targeted Licensee.
Use of a Non-Disclosure Agreement (NDA).
Publications and Trade Organizations.
7 Negotiating and Drafting Agreements.
Negotiation in the 21st Century.
Use of a Memorandum of Understanding.
Cover Page and Table of Contents.
Warranties, Indemnification, Liability, and Authority.
Licensing Computer Software.
Current Licensing Practices.
The Open-Source License Model.
Dealing with Infringers.
Selling Infringed Patents.
Advanced Licensing Techniques?Hybrid versus Separate Licenses.
Separate Agreement Models.
8 Post-Agreement Activities.
Trademark Quality Control.
Audit Timing and Frequency.
The Audit Process.
Problems Found in Audits.
Summary of Audit Principles.
Leveraging License Agreements.
The Licensing Organization.
Local Liaison Offices.
Advantages of Forming a Licensing Organization.
Appendix A?Case Studies.
Consumer Electronics Industry Case Studies.
Licensing Case Study?Dolby Laboratories.
Evolution of the Current Licensing Model.
Symbiosis of Software and Hardware.
Summary of Current Program.
Licensing Case Study?Home THX.
University Licensing Case Studies.
Licensing Case Study?Stanford University.
Cohen-Boyer Recombinant DNA.
The Exclusive License.
The Sondius Trademark Licensing Program.
Patent Case Studies.
Patent Case Study?Compton?s NewMedia.
Patent Licensing Case Study?SGS-Thomson.
Patent Case Study?The Auction of Wang Laboratories? Patent Portfolio.
Appendix B?Sources of Additional Information.
Licensing and Intellectual Property Associations.
Typical Trade Publications.
Appendix C?Annotated Sample License Agreements.
Hybrid Technology License Agreement.
Software Distribution Agreement.
Appendix D?Glossary of Intellectual Property Terms.