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Welcome and Introduction:
Market Timing and Licensing
Options
Varda N. Main
Director, Technology Licensing Office
Intellectual Property Rights
Trade Secret
– Know-how
– Show-how
Patents
Trademarks
Copyright
Mask Works
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Technology Transfer
Collaborative process whereby the products of
R&D flow from a source to the (next) user
Numerous transfer options including:
– Licensing
• To an established company
• To a start-up company
– Alliances
– Use of facilities
– Consulting
– Outright sale
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Packaging of Technology for
Transfer
Licensing needs to be win-win situation
What must the licensor do to ensure that the
licensee will be able to fully use the licensed
technology?
How to identify all the know-how, show-how and
technology needed by the licensee?
What other information may be needed in
negotiating a technology transfer?
– tax credits
– financing
– marketing
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Determining Position in the
Technology Life Cycle
Technical performance obsolescence
Technical feature obsolescence
Cost obsolescence
Safety obsolescence
Shifts in consumer preferences
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What do you really have?
Know the History
Base patents and continuations
Technically related patents and copyrights
Software versions
Previous agreements
Outside authors and inventors
Funding sources
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The View on the Other Side
of the Table
Perception of business risk.
Who’s bringing what to the table?
What are the 3 points of difference for
the technology/opportunity?
What would make a user switch to this
product/process/service?
What is needed to bring this to the
commercial marketplace?
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Importance of Timing
Commercialization and patent prosecution
timelines must coincide - “Window of Opportunity”
Understand the technology & IP life cycles
Understand the impact of competing technologies
(i.e., first to market)
Durability of competitive advantage
Fit with business or corporate strategy
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Value of The Portfolio
Value in the eye of the beholder
A portfolio is more than the sum of its
parts
Value depends on how the portfolio is
protected and the strategy to sell it.
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Portfolio Valuation
What is the competition? Is your portfolio
unique?
Who is willing to buy?
Different Parties = Different values
How critical is technology/portfolio to the
outside?
What are they willing to pay?
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Pricing Technologies
Market value of technology
Uniqueness of technology
Competitive position
Type of protection for the technology
Stage of technology development
Improvement provisions of license
Exclusivity
Field of use
– geographical
– market sector
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Rights under a License
To make
To use
To disclose to others
– by publication
– in a marketed product
– in a service manual
– as a sub-license to a third party
– to lease
To sell
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Types of Licenses
Exclusive - there can only be one licensee; the
licensor has no rights to exploit the
technology/product
Sole - exclusive but for the licensor; i.e., the
licensor has rights to exploit the
technology/product
Non-exclusive - there is no limit to the number
of potential licensees
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Types of Licenses
Irrevocable/Revocable for cause
Territory: World-wide/Limited to named
geographic regions
Field of use: Market-specific
Royalty-bearing/Royalty-free
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REMEMBER…
The technology goes through the entire
innovation/commercialization process (from
concept to end user); people typically don’t
go through the entire process
– Know your strengths and weaknesses
– Know when to say no
– Know when to exit
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Services provided by TLO
Determining IP ownership issues
Marketability assessment of inventions
Patenting of inventions
Registering copyright
Registering trademarks
Valuing commercial worth of technologies
Developing commercialization strategies for technologies
Marketing technologies available for license
Conducting license negotiations
Administering licenses
Chairing the Technical Review Panel and Intellectual Property
Policy Committee
Outreach and training
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Your role and responsibilities
as a RIT inventor or author
To conduct thorough searches (and periodically update
these searches) of the published literature and patents to
determine if your creation is novel
To promptly and completely disclose your creations to RIT
To assist RIT in seeking IP protection on selected
technologies
To assist RIT in seeking licensees for selected
technologies
To enjoy the 50% inventors’ share of licensing revenues!
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TLO website – www.rit.edu/tlo
General information on intellectual property
and licensing
RIT Invention Disclosure Form
RIT policies relating to IP and licensing
Sample agreements and standard IP terms
Technologies available for license
Links to many other related resources
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For more information…….
Technology Licensing Office
Varda N. Main, Director
4018 Eastman Building (Bldg. 1)
(585) 475-2986
[email protected]
www.rit.edu/tlo
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