IP Licensing for the Technology Entrepreneur

Intellectual Property licensing is a complex subject with many moving parts. Unfortunately, it is rarely covered in modern business school curricula. The net result is that managers, C-level execs and Board members seldom approach IP licensing strategically, either in terms of monetisation or in the connection between license terms, and their potential impact on valuation and exit opportunities.

This set of slides attempts to simplify many of these issues for the business strategist - Board members, C-level execs, and senior managers. I have used subsets of this presentation to groups of Executive MBA students, corporate counsel and IP professionals and generally use them as a launching pad for a broader discussion. (To discuss speaking opportunities, please contact martin.suter at iplicensing.net).

These slides draw on my experience, as I have been fortunate to have been mentored by some very capable attorneys over the years (such as Cliff Chillemi, in-house counsel at MeshNetworks, and Jill Riola, Co-Chair, IP Group at Carlton Fields), and worked with top IAM strategists (people like John Cronin from ipCapital Group and Paul Germeraad from Intellectual Assets, Inc.). I have also sat across the table from many very capable negotiators representing companies like Dow Chemical, Microsoft and Motorola and had to justify IP licensing recommendations to VC investors across North America.

 

Feel free to share and comment.

That's my .02!

Martin Suter

(martin.suter at iplicensing.net)

Comments

[Matti Neustadt Storie, Associate at Stoel Rives]

(Comment migrated from LinkedIn)

Hi, Martin -
Great presentation, with lots of high level information. You may consider adding some information on the benefits of cross-licensing in technology developments that may be dependent on existing technology.
You also mention benefits of licensing technology from government agencies. While I can't speak on technology developed for or by the Canadian government, special rules and risks apply to technology developed by or for the the U.S. government. I'd be happy to provide you additional information or bullet points for your presentation - just drop be a note offline.

All the best,
Matti

[Maxwell Smith, Manager, Grant Thornton LLP]

(Comment migrated from LinkedIn)

Hi Martin – I think this presentation definitely achieves your objective of “simplifying the highly complex topic” for the audience described. A possible suggestion would be to include some discussion around the concepts of monitoring and auditing for compliance, i.e., the inclusion of audit clauses, self-reporting requirements by the licensee, and auditing (typically by an independent third party) for the purpose of certifying compliance with the terms and conditions of the agreement.

When the success of a company depends on the reliability and effectiveness of business partners and licensees – there is always a business case for monitoring and verifying contractual performance. This is particularly true in challenging times when there might be greater temptation for third parties to deviate from the agreement (deliberately or not) in order to increase revenue or decrease costs. Typically, a contractual compliance program pays for itself in both monetary and non-monetary value.

[Jason Yip, Technology Transfer and Patent Engineer]

Wow Thanks for sharing. I wish i could have seen this earlier, i think it would be very useful to me at the time i first entered into tech transfer. I think your points are simple enough for any non-IP Pro to get a good grasp of licensing. Yet you also cover very important areas that many other similar introductions miss out like the licensor/licensee conflict as while as the "new-IP" dilemma.