The Commercial Exploitation of Intellectual Property Rights by Licensing

Overview

This Report has been written in response to a demand for a permanent text arising from the seminars, which the author has been presenting, on the commercial exploitation of intellectual property assets by licensing.

It is designed to be a reference for the executive who is concerned with the strategic development of a business using a variety of alliance structures, so as to develop new products, enter new markets or simply to acquire or to gain access to new opportunities.

This Report will show you – whether as licensor or licensee – how to identify and secure profitable opportunities, strategies and techniques for negotiating the best agreement, and finally the techniques of successfully managing a license operation.

Benefits of this report

This report will benefit:

• Expert intellectual property lawyers, who may find the commercial viewpoint of value in better understanding the wishes of their industrial clients.

• Academic institutions, wanting to explore the commercial potential of their research activities, will find guidelines enabling them to assess whether the licensing of early stage developments is an appropriate route to the market place for their inventions.

• Financiers, who may find that the basic principles outlined in this text will enable them to make better informed decisions when businesses approach them for the funding of licensing operations.

• All those whose work involves and requires a knowledge and understanding of international intellectual property law including:
  • In-house lawyers
  • Private Practice lawyers
  • Commercial managers and business executives

Content

Content overview

1. What is licensing?

• What can be licensed?
• Intellectual property and associated rights
• Types of intellectual property
• Forms and protection of intellectual property rights
• International and national patent issues
• The legal basis for licensing

2. Licensing and business strategy

• Licensing as a component of business development
• The costs of protection and the maintenance of rights

3. How to identify a licensor/licensee

• Why decide on a licensing policy?
• Where should a licensee look for an opportunity?
• What qualities must the licensee have in order to have some hope of success?
• Economic assessment of licensing opportunities
• What is needed to improve your chance of success?
• The Can-Balance Perpetual Balancing System

4. Financial issues

• The value of licensing opportunities
• Identification of licensable technology
• Factors to consider when analysing an opportunity
• Investment theory for royalty calculations
• The taxation of intellectual property income

5. Regulatory framework

• Intellectual property monopolies and free trade
• Competition and anti-trust laws
• International regulations
• The free movement of goods/exhaustion of rights

6. Structure and terms of licensing agreements

• Confidentiality of documents
• Definitions
• Specific clauses
• Relative interests of parties to licensing agreements
• Essential clauses of a licence agreement

7. Negotiation of licensing agreements

• A methodology for conducting licensing agreements
• Negotiation strategies
• Negotiation tactics
• How to fail without really trying
• Checklist for preparing a licence negotiation

8. Specific problems that can be encountered

• Patents
• Software
• Databases
• Brand licensing

9. Managing a licensing operation

• Portfolio Managemnet
• Managing the licence agreement after its signature
• Reasons why licensing agreements fail
• The licensing function

10. Typical examples of licensing agreements

• Example 1: Licence agreement for know-how provision and technical procurement actions
• Example 2: Licence option agreement
• Example 3: Licence agreement with provision for sub-licensing to various partners in a multinational consortium
• Example 4: Patent licence agreement
• Example 5: Sub-contract and development agreement

Appendix

• Appendix 1: References to licensing matters
• Appendix 2: EU competition law and restrictive clauses in licensing agreements
• Appendix 3: Basic clauses in a Heads of Agreement

The author

Charles Desforges is currently a partner of CMD Associates (a Brussels-based, management consultancy group) and Chairman of Casect. From May 1997 until October 2000 he was Executive Director of IMnl, an international metal mining consortium based in Paris.

From April 1993 to December 2000 he was Chief Executive of VSL (UK-based organisation specialising in innovation management and investment, European/USA strategic alliances and international licensing) and Chairman of Royston Lead plc from January 1996 to October 1997.

He was Chairman and President of TII (The European Association for Technology Transfer, Innovation and Industrial Information) based in Luxembourg/Brussels from March 1988 to May 1996. He has been an adviser to the CEC for 15 years and since 1984 consultant to and director of a number of companies involved in strategic innovation and international business development.

He has a first class honours degree in applied science (metals and materials) and a Ph.D. (St. John’s College, University of Cambridge), receiving various academic prizes (Mappin and Nesthill medallist) and awards (Freshgate Foundation Scholar and British Council Young Research Scholar).

CPD

Thorogood legal reports are accredited by The Solicitors Regulation Authority (CPD reference DVQ/THPU) for continuing professional development as distance learning education.

NB: Solicitors may claim up to 75% (12 hours) of their annual CPD requirement by undertaking distance learning education.

For more information see The Solicitors Regulation Authority

 

Certificate of completion

Upon reading this publication participants are invited to undertake a final assessment in the form of an on-line multiple choice paper. Upon passing, a certificate of completion will be made available to you, which can be included as part of your CPD requirements should you consider it relevant to your professional development needs.