monetizing ip - presentation: richard weiss, ncr corporation - ip law summit
DESCRIPTION
For more information: [email protected] Richard A. Weiss, who is the Chief IP Counsel at NCR Corporation, delivered his presentation at the marcus evans IP Law Summit held in Las Vegas, NV March 20-22, 2014. Join the 2015 Summit along with top IP Law executives and service providers in an intimate environment for a focused discussion of key new drivers shaping the legal industry today. For more information: [email protected]TRANSCRIPT
NCR Confidential
Monetizing IP Rich Weiss Chief IP Counsel NCR Corporation IP Law Summit March 22, 2014
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Agenda
• IP Monetization (including the Ways)
• IP Value Generation Agreements
• Elements of License Agreements
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IP Monetization
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IP Monetization • IP Monetization should focus not simply on money, but all obtainable value
• By its nature, IP provides significant value obtaining opportunities
• Remember that IP is made up of two parts:
(i) Creations of the Mind (“Technology”): ideas, discoveries, creations, inventions, developments, designs, works of authorship (including software), other expressions, and trade secrets
(ii) Intellectual Property Rights (“IPR”): Rights directed to Technology, e.g., patents, copyrights, trademarks, and trade secret rights
• The value of Technology is inherent, and its uses are endless
• The value of IPR lies in the fact that it provides the ability to control use of Technology, including products utilizing it
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IP Monetization (Cont’d) • The primary ways to leverage IP to obtain value are:
(i) License (ii) Sell
• But the ways you can actually leverage IP for value are numerous, including: • Defense & Protection • Revenue • Business Value
• Creation & Access to Products, Solutions, Technology & Other Assets • Saving & Raising Money • Pull-Through • Business Relationships
• Demonstrate Technology Leadership
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Protect
(Especially Core)
Products, Solutions &
Technology
Facilitate
Relationships/Deals
With Others (incl.
Joint Development)
Have Others
Develop (Incl. Compatible
& Value Add) Products
& Solutions
Utilize
Technologies/
Products in New &
Different Ways
Avoidance of &
Defense Against
3rd Party IPR
Claims
Obtain Access/
Rights To
3rd Party
Technology/IPR
Save (e.g., Cost
Sharing/Tax Structure)
& Raise Money
Help Drive
Adoption Of & Value
From Standards Based
On Technology
…Value
Product,
Solution & Technology
Pull-Through,
Development
& Demand
Technology/IPR
Sales
Technology/IPR
Revenue Licensing
Leverage
Discontinued
Products, Solution &
Technology
Promote & Support
Technology
Leadership
Defense & Protection
Tech. Leadership
Business Value Revenue
How IP Can Be Leveraged To Obtain. . .
Revenue
Defense & Protection
Business Value (Incl. New Assets & Value)
Leadership
Business Value
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IP Value Generation Agreements
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Exemplary IP Value Generation Agreements • IP Sales Agreements – Transfers ownership of Technology and/or IPR
• IP License Agreements – Licenses Technology and/or IPR
• IP Joint Development Agreements – Governs ownership and rights with respect to Technology and IPR
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IP/Patent Sale Agreement • Focus is on transferring title/ownership of IP/Patents from A to B
• Key Elements/Considerations:
• Assignment
• Technology and/or IPR
• Encumbrances
• Past, Present & Future Rights
• Payment
• Brokers
• Grantback?
• Reps.
• Title/Ownership
• Encumbrances/Limitation On Rights (e.g., validity, licenses, assertions)
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IP License Agreements • IPR License Agreements
• Patent License Agreements (aka, “Stick Licenses”)
• Simply agreeing not to sue an entity for making, using, offering for sale, selling and/or importing an item or process covered by a patent
• No technology or other tangibles involved
• Patent Cross-License Agreements (aka, “Reciprocal Licenses”)
• Other IPR License Agreements – Inherently involve Technology as well
• Technology License Agreements (aka, “Carrot Licenses”)
• Software License Agreements
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Elements of License Agreements
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Key Patent License Agreement Elements • License Grant
• Rights: Make/Have Made; Use; Offer To Sell; Sell; Import
• Licensed Products and/or Activities
• Field of Use / Territory
• Fees: Fee bearing; Fully Paid-Up/Royalty-Free; Other Business Value
• Interest / Late Fees
• Related Terms: Termination; Audit Rights (especially in the case of royalties)
• Term: License and Agreement
• Grantback
• Assignment of License
• Additional Covenant
• Release
• Reps.
• Indemnification
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Patent License Grant • Sample Patent License Grant: “ABC hereby grants Licensee a
personal, non-exclusive, non-transferable, non-sublicenable, fee bearing license, in and for the Term, under the Licensed Patents, to make (but not have made), use, offer for sale, sell, and import Licensed Products [and/or carry out Licensed Activities] in and for the Licensed Territory in and for the Field of Use.”
• personal
• non-transferable
• perpetual and/or irrevocable
• make / have made
• Term = x years; Until last of the of Licensed Patents expires
• Fee type has an impact
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Key Patent Cross-License Agreement Elements • Many of the same issues as with any patent license
• Plus:
• Capture Period
• Subsidiary / Affiliates, especially application before & after becoming one, and including divestitures / spin-offs
• Patent rights from acquirers
• Successor Assignability
• Patent rights from acquirers
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• Sample Technology License Grant: “ABC hereby grants Licensee a personal, non-exclusive, non-transferable, non-sublicenable, fee bearing license, in and for the Term, under the Licensed IPR, to Use the Licensed Technology in the Licensed Territory in and for the Field of Use.”
• Licensed IPR: patents, copyrights, trade secrets, [and/or] etc.
• Patents specific to the Technology and/or its use
• Use: make, use, copy, modify, [and/or] etc.
Technology License Grant
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• Many of the same issues as with any patent license, but with an additional focus on IPR & Technology
• Define licensed technology, products, and services
• Define IPR and what rights with respect to IPR
• Rights / Ownership of improvements
• Grantback
Key Technology License Elements
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Careful Drafting Of License Grants Is Key • Sample Grant A: ABC licenses Customer with respect to the
Products, where “Products” are products of the Customer.
• Sample Grant A’: ABC licenses Customer under its intellectual property with respect to the Products, where “Products” are products of the Customer.
• Sample Grant B: ABC licenses customer under its intellectual property to use the Deliverables, where “Deliverables” are the software, products, and services created for or provided to the customer pursuant to this Agreement.
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Summary • IP is more than just IPR, it also includes Technology
• IP Monetization should not simply be about cash; the opportunities to obtain value are endless.
• IP Value Generation Agreement must be very carefully drafted, especially with respect to the grant, IPR, IPR Rights & Technology
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Q & A
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