Transcript markettiming

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
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Copyright
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Mask Works
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Technology Transfer

Collaborative process whereby the products of
R&D flow from a source to the (next) user
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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
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Licensing needs to be win-win situation
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What must the licensor do to ensure that the
licensee will be able to fully use the licensed
technology?
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How to identify all the know-how, show-how and
technology needed by the licensee?
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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
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Technical performance obsolescence
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Technical feature obsolescence
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Cost obsolescence
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Safety obsolescence
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Shifts in consumer preferences
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What do you really have?
Know the History
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Base patents and continuations
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Technically related patents and copyrights
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Software versions
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Previous agreements
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Outside authors and inventors
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Funding sources
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The View on the Other Side
of the Table
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Perception of business risk.
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Who’s bringing what to the table?
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What are the 3 points of difference for
the technology/opportunity?
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What would make a user switch to this
product/process/service?
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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”
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Understand the technology & IP life cycles
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Understand the impact of competing technologies
(i.e., first to market)
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Durability of competitive advantage
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Fit with business or corporate strategy
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Value of The Portfolio
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Value in the eye of the beholder
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A portfolio is more than the sum of its
parts
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Value depends on how the portfolio is
protected and the strategy to sell it.
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Portfolio Valuation
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What is the competition? Is your portfolio
unique?

Who is willing to buy?
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Different Parties = Different values
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How critical is technology/portfolio to the
outside?
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What are they willing to pay?
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Pricing Technologies
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Market value of technology
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Uniqueness of technology
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Competitive position
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Type of protection for the technology
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Stage of technology development
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Improvement provisions of license
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Exclusivity
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Field of use
– geographical
– market sector
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Rights under a License

To make

To use
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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
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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
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Territory: World-wide/Limited to named
geographic regions
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Field of use: Market-specific
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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
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Determining IP ownership issues
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Marketability assessment of inventions
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Patenting of inventions
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Registering copyright
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Registering trademarks
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Valuing commercial worth of technologies
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Developing commercialization strategies for technologies
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Marketing technologies available for license
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Conducting license negotiations
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Administering licenses
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Chairing the Technical Review Panel and Intellectual Property
Policy Committee
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Outreach and training
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Your role and responsibilities
as a RIT inventor or author
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To conduct thorough searches (and periodically update
these searches) of the published literature and patents to
determine if your creation is novel
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To promptly and completely disclose your creations to RIT
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To assist RIT in seeking IP protection on selected
technologies
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To assist RIT in seeking licensees for selected
technologies
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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
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RIT Invention Disclosure Form
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RIT policies relating to IP and licensing
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Sample agreements and standard IP terms
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Technologies available for license
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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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