the concept of technology commercialization technology commercialization is making a business model...
TRANSCRIPT
The Concept of Technology Commercialization
bull Technology Commercialization is making a business model of increasing profits after the break even point by providing value to subject customers through the development of products (products services etc) using the special technologies of particular industries and fields and commercializing this
bull
bull Here specialized technology means combined technology which has integrated the already commercialized individual technologies creative technology developed in house by corporations and technology licensed by other corporations or research organizations
Technology commercializationprocess
bull The technology commercialization process begins with an idea and culminates with introduction of that idea as a product or service into the marketplace This process diagram shows the general steps in the commercialization process beginning with disclosure
STEPS
bull DISCLOSURE
bull EVALUATION
bull I P PROTECTION
bull MARKETING
DISCLOSURE
bull The technology commercialization process begins with the inventor disclosing his or her complete invention in writing by preparing an invention disclosure form (IDF) and submitting it to the UNM Patent Administration Office (PAO)
DISCLOSURE
bull The IDF should contain a complete description of the invention dated signatures of all inventors dated signatures of witnesses who understand the invention and the dated signature of the department chair This information is then used to develop a patent application
DISCLOSURE
bull Inventors should consider the possibility of protecting an idea when they are ready to make public presentations or publish an idea So-called poster sessions and grant applications may constitute public disclosure and therefore may limit protectability of the idea
EVALUATION
bull The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Here specialized technology means combined technology which has integrated the already commercialized individual technologies creative technology developed in house by corporations and technology licensed by other corporations or research organizations
Technology commercializationprocess
bull The technology commercialization process begins with an idea and culminates with introduction of that idea as a product or service into the marketplace This process diagram shows the general steps in the commercialization process beginning with disclosure
STEPS
bull DISCLOSURE
bull EVALUATION
bull I P PROTECTION
bull MARKETING
DISCLOSURE
bull The technology commercialization process begins with the inventor disclosing his or her complete invention in writing by preparing an invention disclosure form (IDF) and submitting it to the UNM Patent Administration Office (PAO)
DISCLOSURE
bull The IDF should contain a complete description of the invention dated signatures of all inventors dated signatures of witnesses who understand the invention and the dated signature of the department chair This information is then used to develop a patent application
DISCLOSURE
bull Inventors should consider the possibility of protecting an idea when they are ready to make public presentations or publish an idea So-called poster sessions and grant applications may constitute public disclosure and therefore may limit protectability of the idea
EVALUATION
bull The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Technology commercializationprocess
bull The technology commercialization process begins with an idea and culminates with introduction of that idea as a product or service into the marketplace This process diagram shows the general steps in the commercialization process beginning with disclosure
STEPS
bull DISCLOSURE
bull EVALUATION
bull I P PROTECTION
bull MARKETING
DISCLOSURE
bull The technology commercialization process begins with the inventor disclosing his or her complete invention in writing by preparing an invention disclosure form (IDF) and submitting it to the UNM Patent Administration Office (PAO)
DISCLOSURE
bull The IDF should contain a complete description of the invention dated signatures of all inventors dated signatures of witnesses who understand the invention and the dated signature of the department chair This information is then used to develop a patent application
DISCLOSURE
bull Inventors should consider the possibility of protecting an idea when they are ready to make public presentations or publish an idea So-called poster sessions and grant applications may constitute public disclosure and therefore may limit protectability of the idea
EVALUATION
bull The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
STEPS
bull DISCLOSURE
bull EVALUATION
bull I P PROTECTION
bull MARKETING
DISCLOSURE
bull The technology commercialization process begins with the inventor disclosing his or her complete invention in writing by preparing an invention disclosure form (IDF) and submitting it to the UNM Patent Administration Office (PAO)
DISCLOSURE
bull The IDF should contain a complete description of the invention dated signatures of all inventors dated signatures of witnesses who understand the invention and the dated signature of the department chair This information is then used to develop a patent application
DISCLOSURE
bull Inventors should consider the possibility of protecting an idea when they are ready to make public presentations or publish an idea So-called poster sessions and grant applications may constitute public disclosure and therefore may limit protectability of the idea
EVALUATION
bull The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
DISCLOSURE
bull The technology commercialization process begins with the inventor disclosing his or her complete invention in writing by preparing an invention disclosure form (IDF) and submitting it to the UNM Patent Administration Office (PAO)
DISCLOSURE
bull The IDF should contain a complete description of the invention dated signatures of all inventors dated signatures of witnesses who understand the invention and the dated signature of the department chair This information is then used to develop a patent application
DISCLOSURE
bull Inventors should consider the possibility of protecting an idea when they are ready to make public presentations or publish an idea So-called poster sessions and grant applications may constitute public disclosure and therefore may limit protectability of the idea
EVALUATION
bull The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
DISCLOSURE
bull The IDF should contain a complete description of the invention dated signatures of all inventors dated signatures of witnesses who understand the invention and the dated signature of the department chair This information is then used to develop a patent application
DISCLOSURE
bull Inventors should consider the possibility of protecting an idea when they are ready to make public presentations or publish an idea So-called poster sessions and grant applications may constitute public disclosure and therefore may limit protectability of the idea
EVALUATION
bull The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
DISCLOSURE
bull Inventors should consider the possibility of protecting an idea when they are ready to make public presentations or publish an idea So-called poster sessions and grant applications may constitute public disclosure and therefore may limit protectability of the idea
EVALUATION
bull The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
EVALUATION
bull The completed invention disclosure form (IDF) is forwarded by the UNM Patent Administration Office (PAO) to STC to ensure the completeness of the invention description and for evaluation of the technology for intellectual property protection
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
EVALUATION
bull STC may request additional information from the inventors to fully understand the disclosed invention The evaluation of the disclosed idea includes the protectability and commercial potential
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
I P PATENT PROTECTION
bull Patenting is the most commonly considered method of intellectual property protection however confidentiality agreements trademarks copyrights and trade secrets are other means of intellectual property protection
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
MARKETING
bull Marketing of an idea may begin as soon as it is disclosed or at least as soon as a provisional patent application or utility patent application is filed or some other intellectual property protection has been initiated
bull
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
MARKETING
bull Once an idea has been disclosed to UNM STC will undertake market research to evaluate the commercial potential of an idea This market research will help identifiy potential licensees as well We will include a non-confidential description of the idea on our website and include it in our technology portfolio (our published catalog of UNM inventions available for licensing
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
MARKETING
bull The best course of action is to talk with STC as soon as possible to discuss what options are available to protect the idea prior to public disclosure Note that information about an invention included in research proposals should be labeled Proprietary Information of UNM
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
MARKETING
bull We will proactively approach potential licensees to determine interest especially those identified by inventors In addition we will discuss the possibility of a start-up company being formed as a commercialization vehicle of which the inventors are typically involved
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
MARKETING
bull Bringing an idea to market through commercialization can be achieved by several avenues the most common through licensing of an idea to an established company
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
TECHONOLOGY AND
ECONOMIC CHANGES
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull There are three fundamental changes that the world economy is now facing
bull First tariff and non-tariff barriers are falling down under the WTO regime
bull Second business activities are being globalized As a result cross-border investments are actively taking place
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull And then as trade and overseas investment increase one nations economic policies and conditions greatly affect those of the other nations
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull As a direct marketing channel virtually linked to the lsquomandirsquo system for price discovery lsquoe-Choupalrsquo eliminates wasteful intermediation and multiple handling Thereby it significantly reduces transaction costs
bull Farmers benefit through enhanced farm productivity and higher farm gate prices
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull lsquoe-Choupalrsquo ensures world-class quality in delivering all these goods amp services through several product service specific partnerships with the leaders in the respective fields in addition to ITCrsquos own expertise
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc Less than 5 delinquency and always profitable
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Micro economic
Changes in production structure
Changes in investment structure
Changes in employment structure
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Macro eco changes
bull Changes take place in every part of the business development of goods and technology procurement production sales distribution and post-sale services
bull Due to CAD enterprises lay great importance on rapid development of diverse goods and technology in order to satisfy customers
bull Time to market is also getting an important factor in this economic environment
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Meanwhile enterprises change production system from mass production under economy of scale into production on demand by CAM and ERP
bull In competition with large companies to increase the market share venture companies are successfully deploying
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Technology has enabled bull online booking of Indian Railways
The largest rail network in the worldCarries the maximum passengers in the worldFor most it is the only mode of long distance transportationBooking has moved to the internet Fuelled growth of credit cards
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Technology has brought IT outsourcing
Led to larger disposable incomesIncreased spending habits Increased movement o money through economyIncreased job opportunitiesInflow of foreign money into the countryPercolation of monies into the economy
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Co-Existence
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Modern City skylines
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
The Wired Indian
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Technology parks
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Electronic city ndash Bangalore Largest Technology Park in Asia
employing more than 100000 people
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Science and Technology Policy Benefits to all
Govt institutes Universities
Technologies products and
servicesBenefits goods services security
Business craftsmen NGOs
other local infrastructure
Common man
Funds human capital knowledge
resources
Deals with everything ndash Policy Strategy and Implementation
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Inflow of monies into the countrybull Inflow of existing technologybull RampD outsourcing brings in knowledgebull Outsourcing leads to increase in
Salaries of employeesbull Manpower intensive outsourcing
allows for distribution of incomebull Increases the spending power adds
more jobs grows other businessesbull Money international exposure
knowledge processes technology etc
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Technology of E-ticket enabled Air Deccan to start its services Today we have fleet or low cost carriers Big impact on the full fare carriers who had to lower their costsAllowed for E-Ticket reduces the costs and middleman commissions
bull Innovation and providing a One Rupee sachet for shampoo Changed industry way of doing businessVolumes have gone through the roofFocus was to get to the people who have very little money on hand
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Micro Finance which a mix of technology and innovation Brought about a major revolution in the social fabricEnabled millions of people to get a loan and start something of their ownLoans for poor starting from USD 100 to start home business like buying a goat buy vegetables to sell them etc
Less than 5 delinquency and always profitable
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Classification of Technology Commercialization
bull There are diverse classifications of technology commercialization
bull Firstly the characteristics differ greatly depending on whether it is in the public sector or the private sector
bull and whether the technology discovery is motivated by seeds or needs
bull and there are differences due to business types (start-up technology transfer spin-off RampD services) and
bull characteristics are held in accordance with the business principal (research center technician professor corporation etc)
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Types of commercialisation
bull Full Commercializationndash Means that enterprises so designated will be
expected to operate profitnotably on a commercial basis and be able to raise funds from the capital market without government guarantee Such enterprises are expected to use private sector procedures in the running of their businesses
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Partial Commercializationndash Means that such enterprises so designated will be expected to
generate enough revenue to cover their operating expenditures The government may consider giving them capital grants to finance their capital projects
bull In both full and partial commercialization no divestment of the Federal Governmentrsquos shareholding will be involved and subject to the general regulatory powers of the Federal Government the enterprises shall
bull Fix rate prices and charges for goods produced and services rendered
bull Capitalise assets bull Sue and be sued in their corporate names
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
What is a license
bull A license is a legal document that allows an individual or company (the licensee) to use the intellectual propert (proprietary materials or know-how) of another individual or company (the licensor) in return for remuneration This remuneration is usually in the form of royalty payments but may also involve an upfront lump sum payment
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Unlike an outright sale or assignment a license allows the licensor to retain ownership rights of the IP The major advantage of licensing is that the responsibility for manufacturing selling distribution and even further development of the technologyproductprocess can be transferred to the licensee thus reducing the investment required the inventor in commercialization
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull The license agreement has terms defining the length of time the license is valid the markets (territory) in which the licensee can use or sell the product whether or not sublicenses are permitted the nature and amount of upfront fees and royalties and whether or not the licensor has rights to any improvements developed by the licensee
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
What issues must be addressed in terms of license agreements bull License agreements are very complex and
need to be as comprehensive as possible in order to ensure that the rights of both the licensor and the licensee are covered for all eventualities It is highly recommended that the negotiating and drafting of license agreements are carried out with the assistance of a legal specialist with expertise in the licensing of technologies
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Below are listed some of the key issues that must be addressed when negotiating a license agreement
bull Obligation for the licensee to share plans for commercial development
bull Time limits on the development and release of the product onto the market by the licensee
bull Clear definitions of the intellectual property related to the license agreement
bull Clear definitions of the types of products the licensee is permitted to develop using the intellectual property
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull The term of the license agreement (In the case of patents this is often the lifetime of the patents)
bull The payment amounts structure and terms bull The exclusivity and geographical scope of the
license bull Guarantees or warranties on the technology bull Rights of the licensor to any improvements
developed by the licensee
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
What types of technology licenses do you get
bull The majority of technology licenses are for patents copyright (especially in software) and know-how and one license may relate to more than one patent andor other type of intellectual property The following types of technology licenses can be granted by licensors
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Patent commercialization licenses provide licensees with rights to patented technology or technology covered in patent applications that have been filed in anticipation of receiving a patent These licenses can be exclusive or non-exclusive
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Exclusive licenses are those in which one licensee receives exclusive rights to develop products using the IP This means that both the licensor and other potential licensees are prevented from exploiting the IP This often provides the licensee with a significant competitive advantage and the potential for a large financial return therefore the royalty obligations and financial terms in such licenses are often quite substantial
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Non-exclusive licenses give several licensees as well as the licensor the right to develop products using the IP Such licenses are often given when the technology has the potential to significantly benefit the wider public and when providing multiple licenses may accelerate its entry into the marketplace Some non-exclusive licenses allow the licensee to use the IP internally only eg where the technology is useful as a tool or process but is not itself a marketable product
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Commercial evaluation licenses (also known as options) grant a potential licensee the option (for a fee) to negotiate a license within a specific time while the company assesses the commercial potential or appropriateness of the technology This allows the licensee to explore the value of a new technology for a limited time before making the financial and resource commitment of a full license
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Commercial evaluation licenses have smaller financial terms and are of a short duration If the licensee finds the technology meets their needs then the parties can negotiate a new agreement for an exclusive or non-exclusive patent commercialization license
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Biological materials licenses provide licensees with access to non-patented materials or biological constructs that were prepared at great effort and expense and may only be available from the laboratories that made them These licenses can be non-exclusive and for internal use only or for commercial sale to promote the wider use of unique materials or biological constructs
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Strategic Alliancebull Strategic alliance is an inter-firm
cooperative relationship that involves trading of mutually beneficial resources such as technologies and skills
bull Such relationships are built on credentials of each participant and mutual trust
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Alliance involves sharing of risks with aim of achieving increased gains for each participant
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Need for Alliance
bull Regulatory prerequisite
bull Market reach ndash newer markets for existing products
bull Newer products for existing markets
bull Cost effectiveness
bull Access to newer skills and technologies
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
APIsPackaging
Manufacturing
Clinical BA-BE Studies
RegulatoryMarketing
Distribution
R ampD
CRAM
IPR
Alliances
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Strategic Alliance as An Alternative to Diversification
bullAdvantagesndash Avoids bureaucratic costs of diversificationndash Shared costs and risksndash Uses complementary skills of each partnerndash Creates value through economies of scope
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Disadvantagesndash Profits must be sharedndash Disclosure of critical know-how to potential
competitor
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
70
Joint ventures
ndash Joint venture is a cooperative business activity formed by two or more separate organisations for strategic purposes crating an independent entitythe ownership the operational resposibility the risk and rewards are shared in agreed manner through a promotional agreement
ndash In a JV the respective stengths are shared to overcome a weakness or exploit a new opportunity
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
ndash In international business JV is one of the most popular forms of organisations because it has the least financial political and legal constraints as a mode of entry
ndash Advantages are flexibility less legal and statutory constraints synergy and brings growth for both parties
ndash Disadvantages are conflicts loss of control operations from the respective JV parties and in technology transfers less advantages to stronger party
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
73
Consortia
ndash It is a loose partnership between companies in similar or allied industries who pool their resources to undertake specific tasks
ndash Typical consortia working can be seen in R amp D activity loans insurance develpomental work of various types
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
75
Franchising
ndash It is an agreement under which a company grants right to other company to open an establishment using the name brand products services and operating systems of the parent companythe first company is called the franchiser company and the company that uses the name of the franchiser is called the franchisee
ndash Fast growth least capital and mutual benefit
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
76
Subcontracting Sub contracting is a form of outsourcing the
work to outside organisation or individuals Most companies do it in different degrees International subcontracting is a huge area in
which business is developing very fastThe BPO is mostly based on subcontracting Various functions on the value chain is subcontracted to take advantage of the cost difference in factors of production in different locations in the world
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
RampD contract
bull External is a strategy whereby particular technologies are acquired by requesting the development to external research centers universities specialized research centers etc and there are methods such as joint research development RampD outsourcing etc Especially even in Korea with the emergence of specialized RampD corporations the demand for and interest in RampD outsourcing is increasing
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Outsourcing is generally utilized for cost reduction but RampD outsourcing is effective in terms of specialization and speed of technology development as it utilizes organizations with established technology infrastructure However with this method there is the problem with a preoccupation to technology development leadership and concerns regarding the release of confidential technology of the company
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
79
Networking
ndash In recent years a new and radical type of organisations have emerged with network structure It is also called VIRTUAL ORGANISATION because it is composed of a series of functional project supply groups or collaborations or partnerships linked and constantly changing the cobweb like networking is nonhierarchial in nature but each one doing its specified function in the value chain
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
ndash The organisation is only a shell electronically connected to some completely owned division partially owned subsidiariesand other independent companies
ndash Such organisations will outsource most of the functions
ndash For ex Amason Com Most functions of DEL COMPUTERS is carried out through a network organisation
ndash Virtual organisation is most dynamic fexible and easy to add delete disband and relatively less costly
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Technology Outsourcing
bull Outsourcing is the supply of various management resources required in corporate activity from not
bull internal but external sources through contracting In the case where technology related
bull management resources are externally supplied it can be considered as technology outsourcing
bull There is no opposition to the view that technology outsourcing will rapidly become widespread
bull following the recent changes in the management environment
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Technology outsourcing subjects
Complete corporations amp technology required for commercialization (production sales etc)
Sectional amp key factor technology which can supplement in-house technology
Technology services required in the technology development amp commercialization process
Research facilities amp equipment Other technology related management support
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Why tech outsourcing
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Strategic Outsourcing and the Virtual Corporation
bullOutsourcingndash Allowing subcontractors to perform value creation activities
Outsourcing advantagesOutsourcing advantages Efficient subcontractors Efficient subcontractors
reduce overall costsreduce overall costs Better product differentiationBetter product differentiation Allows for the concentrationAllows for the concentration
of available resourcesof available resources Firm becomes more flexible Firm becomes more flexible
and responsiveand responsive
Outsourcing disadvantagesOutsourcing disadvantages Failure to learn from Failure to learn from
outsourced activityoutsourced activity Too much dependence on a Too much dependence on a
single suppliersingle supplier Danger of outsourcing value Danger of outsourcing value
creation activities leading to creation activities leading to competitive advantagecompetitive advantage
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
WHAT IS LICENSING NEGOTIATION
bull What is Licensing
bull 1048707 Websterrsquos defines a ldquolicenserdquo as
bull ldquohellipa permission granted by competent
bull authority to engage in a business or
bull occupation or in an activity otherwise
bull unlawfulrdquo
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
What is Licensing Negotiation
bull 1048707 hellipto arrange for or bring about through conference
bull discussion and compromise a permission granted by
bull competent authority to engage in a business orbull occupation or in an activity otherwise unlawfulbull 1048707 In the licensing business it is usually the right
to makebull use or sellhellipbased on proprietary rightshellipforbull considerationhellipbull WHAT
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
WHAT IS ldquoTECHNOLOGYrdquo LICENSING
bull For purposes of this discussion ldquotechnologyrdquo includes
bull 1048707 Patents
bull 1048707 Copyrights
bull 1048707 Trademarksservice marks
bull 1048707 ldquoKnow-how
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Creating a WinndashWin Outcome
bull We want to create that small piece of common ground
bull upon which both parties can agreebull 1048707 Several possible outcomesbull 1048707 Good deal for both = Good for bothbull 1048707 Great deal for them = Good for usbull 1048707 Lose ndash Win or Win ndash Lose = Good for onebull 1048707 Good for them = Great for us
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
WinndashWin
bull 1048707 Desirable Outcomes
bull 1048707 Good deal for both
bull 1048707 Good for them ndash Great for us
bull We want to create that small piece of common ground upon which both parties can agree
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Step 1mdashPreparation
bull 1048707 The most important factorbull 1048707 You need to understandbull 1048707 The purpose ndash for both partiesbull 1048707 Needs wants desiresbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiate
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Ask your side ndash ldquoWhen the negotiation is over what do we want to leave withrdquo
bull 1048707 What are they thinking Conceptualize ldquoWhat do they wantrdquo
bull 1048707 Four types of sessionsbull 1048707 ldquoBlind Daterdquobull ldquoInitial Sessionrdquobull ldquoIn the Heat ofrdquohellipbull ldquoClosurerdquobull 1048707 All require intense preparation
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Step 2mdashStrategy
bull The second most important factorbull 1048707 Compose our team (see step 3)bull 1048707 Understand their teambull 1048707 Who are their gatekeepers and the decisionbull makersbull 1048707 Strengths weaknessesbull 1048707 Time framebull 1048707 Prioritiesbull 1048707 Commitment by both parties to negotiatebull 1048707 What do we wantbull 1048707 Write it down
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Strategy (Cont)
bull Transmit a license applicationbull 1048707 Ask for a business plan balance sheet and
income statementbull 1048707 Manage both partiesrsquo expectationsbull 1048707 Be able to respond to changesbull 1048707 Create options that allow closurebull 1048707 Define our walkaway positionbull 1048707 Conceptualize ldquoWhat are they thinkingrdquobull 1048707 What do we wantbull 1048707 Write it down
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull General company informationmdashname type of business size etc
bull 1048707 Description of intellectual property (IP) desiredbull 1048707 Description of license rights desiredmdashexclusivity field
of use territory etcbull 1048707 Intended commercial applications products etcbull 1048707 Competitive market products servicesbull 1048707 Market barriers for entrybull 1048707 Anticipated investment ROI revenue and profitbull 1048707 Date of prototype first salebull 1048707 Market size and expected capture for 5 years
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Step 3mdashNegotiating Team
bull 1048707 May be as few as one per side two is better for your side
bull 1048707 But too many can be sub-optimalbull 1048707 Define the leader who will conduct the overall
negotiationbull 1048707 Who responds to technical issuesbull 1048707 Who responds to legal issuesbull 1048707 Understand their team compositionbull 1048707 Never negotiate with anyone who does not have thebull authority to do so
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Negotiating Team (Cont)bull Mechanicsbull 1048707 One voicebull 1048707 Second team member is observernote takersubjectbull matter expertbull 1048707 The leader conducts the overall negotiationbull 1048707 Each member of your team understands individual
rolesbull 1048707 Take notesbull 1048707 Develop a time-out signalbull 1048707 There can only be one leader
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Step 4mdashPreparation for Initial Session
bull Gather as much information as possiblebull 1048707 Analyze license application business plan balance
sheetbull and income statementbull 1048707 Review and refine our strategybull 1048707 Draft and transmit term sheetbull 1048707 Obtain our teamrsquos and decision makerrsquos approvalbull 1048707 Visualize their possible comments and prepare
responsesbull 1048707 Understand how our technology fits into their strategicbull focusbull 1048707 Whorsquos attending - With or without lawyers
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Term Sheetbull 1048707 Proprietary rightsbull 1048707 Exclusivity fields of use license durationbull 1048707 Sublicensing rights and considerationbull 1048707 Gross sales definitionbull 1048707 Patent reimbursementbull 1048707 Upfront fee minimum royalty percentage of salesbull (equity)bull 1048707 Diligence provisionsbull 1048707 Sponsored research
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Step 5mdashInitial Session
bull Our primary goal is term sheet agreementbull 1048707 Understand how our technology fits into their strategic
focusbull 1048707 Review license application income statement
business plan and anybull draft agreementsbull 1048707 View their comments and prepare responsesbull 1048707 Upon term sheet agreement prepare draft licensebull 1048707 Conceptualize what they want (framework of their
request)bull 1048707 Whorsquos attending - With or without lawyers
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
How to Get Started
bull 1048707 Develop our strategybull 1048707 Pre-script our points priorities and who will speak
and whenbull 1048707 Arrive 5 minutes early ndash Not earlier unless it is
expectedbull 1048707 Seating ndash The two negotiatorsbull 1048707 Place no departure deadline on yourself but do not
leave the session open-endedbull 1048707 Rarely initiate business discussionsbull 1048707 Have them talk about their company business plan
license application etcbull 1048707 Dress up ndash not down
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
What Do We Need to Have With Us
bull For every sessionbull 1048707 Prepare negotiation binder or filebull 1048707 For newly proposed language have copies for
everyonebull 1048707 Copies of the IPbull 1048707 Prepare past negotiations summarybull 1048707 Establish a time-out signalbull 1048707 If not concluded suggest alternating meetinglocations
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Step 6mdashldquoIn the Heat ofrdquo Session
bull 1048707 Where 1+ iterations have transpiredbull 1048707 View their comments and what might be their proposed
adjustmentsbull 1048707 Define our proposed adjustmentsbull 1048707 Decide what adjustments we will make and what will the extra
effort forbull closure takebull 1048707 Lead the discussionbull 1048707 Upon commencing askbull 1048707 ldquoCan we briefly summarize our last sessionrdquobull 1048707 ldquoWhat would we both like to see at the end of this sessionrdquobull 1048707 Timingbull 1048707 Whorsquos attending - With or without lawyers
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Step 7mdashClosure Session
bull 1048707 Last iteration of negotiationbull 1048707 ldquoWhere did we leave off in our last
discussionrdquobull 1048707 View their comments and prepare responsesbull 1048707 Define priorities necessary to make
adjustmentsbull 1048707 Conceptualize what their response will be to
those proposed adjustmentsbull 1048707 Strategize how to grudgingly ldquogive inrdquo on the
adjustments we are holding for closurebull 1048707 Whorsquos attending - With or without lawyers
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull It is because there is no other waybull but to adapt and find countermeasures to the changing
management environment for survival andbull achieve essential corporate aims whether it is a
corporation or not As the atmosphere in relation tobull the necessity of technology outsourcing increases the
demand for industries in technology risesbull and this calls upon the supply of technology That is
when there is demand business opportunitiesbull are created and this kind of business opportunity in
most cases attracts and absorbs marketbull participants The general subjects of technology
outsourcing are as follows
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
The ldquoBlind Daterdquo Phenomenon
bull 1048707 The ldquoblind date phenomenonrdquo is when you arebull unexpectedly invited or requested to attend a
sessionbull 1048707 Obtain as much information as possible
before you go1048707 Whorsquos the ldquodaterdquo (the people amp parties)bull 1048707 Whatrsquos their interest (timing amp purpose)bull 1048707 What we want (whatrsquos the deal)bull 1048707 Lessons learned with the Principal
Investigator (PI)
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
Step 8mdashDetails
bull Listeningbull 1048707 Ask the right questions and listen completelybull 1048707 Ask in a way that encourages other party to favorablybull respondbull 1048707 Be their ldquobest audiencerdquobull 1048707 How can we persuade when we do not fully listen orbull understand their positionbull 1048707 Watch body language
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Have a signing ceremony
bull 1048707 Take lots of pictures
bull 1048707 Run an article in your organization
bull laboratory newsletter
bull 1048707 Do a press release
bull 1048707 Have a celebratory dinner
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
THINGS TO DO AND THINGS TO AVOID
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
THINGS TO DO
bull Develop preapproved negotiation strategybull 1048707 Determine who speaks for them and
what authoritybull they carrybull 1048707 Determine who speaks for usbull 1048707 Assure proper table placementbull 1048707 Be gracious with amenities if hostingbull 1048707 Maintain eye contact
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Listen carefully ndash Take extensive notes including who
bull says whatbull 1048707 Practice silence ndash Develop ldquopoker facerdquobull 1048707 Take time-outs to maintain team focusbull 1048707 Send a thank-you notebull 1048707 Consider signing ceremonycelebrationbull 1048707 Press releasebull 1048707 Newsletter article
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-
bull Talking too muchbull 1048707 Overstating erodes credibilitybull 1048707 Develops unnecessary expectationsbull 1048707 ldquoBlurt outsrdquobull 1048707 Losing control of the negotiation directionbull 1048707 Emotionsbull 1048707 Avoid at all costsbull 1048707 Escalation of back-channel negotiationbull 1048707 Manage your managers
- Slide 1
- The Concept of Technology Commercialization
- Slide 3
- Technology commercialization process
- STEPS
- DISCLOSURE
- Slide 7
- Slide 8
- EVALUATION
- Slide 10
- I P PATENT PROTECTION
- MARKETING
- Slide 13
- Slide 14
- Slide 15
- Slide 16
- Slide 17
- Slide 18
- Slide 19
- Slide 20
- Slide 21
- Slide 22
- Slide 23
- Slide 24
- Slide 25
- Slide 26
- Slide 27
- Slide 28
- Slide 29
- Micro economic
- Macro eco changes
- Slide 32
- Slide 33
- Slide 34
- Slide 35
- Slide 36
- Slide 37
- Slide 38
- Slide 39
- Slide 40
- Slide 41
- Slide 42
- Slide 43
- Slide 44
- Slide 45
- Slide 46
- Classification of Technology Commercialization
- Types of commercialisation
- Slide 49
- What is a license
- Slide 51
- Slide 52
- What issues must be addressed in terms of license agreements
- Slide 54
- Slide 55
- What types of technology licenses do you get
- Slide 57
- Slide 58
- Slide 59
- Slide 60
- Slide 61
- Slide 62
- Strategic Alliance
- Slide 64
- Need for Alliance
- Slide 66
- Strategic Alliance as An Alternative to Diversification
- Slide 68
- Slide 69
- Joint ventures
- Slide 71
- Slide 72
- Consortia
- Slide 74
- Franchising
- Subcontracting
- RampD contract
- Slide 78
- Networking
- Slide 80
- Technology Outsourcing
- Technology outsourcing subjects
- Why tech outsourcing
- Strategic Outsourcing and the Virtual Corporation
- WHAT IS LICENSING NEGOTIATION
- What is Licensing Negotiation
- WHAT IS ldquoTECHNOLOGYrdquo LICENSING
- Creating a WinndashWin Outcome
- WinndashWin
- Step 1mdashPreparation
- Slide 91
- Step 2mdashStrategy
- Strategy (Cont)
- Slide 94
- Step 3mdashNegotiating Team
- Slide 96
- Step 4mdashPreparation for Initial Session
- Slide 98
- Step 5mdashInitial Session
- How to Get Started
- What Do We Need to Have With Us
- Step 6mdashldquoIn the Heat ofrdquo Session
- Step 7mdashClosure Session
- Slide 104
- The ldquoBlind Daterdquo Phenomenon
- Step 8mdashDetails
- Slide 107
- THINGS TO DO AND THINGS TO AVOID
- THINGS TO DO
- Slide 110
- Slide 111
-