How A Licensing Professional Can Use The Internet
by
Scott Asmus
Licensing and Technology Transfers refers to contracts granting permission to use the Intellectual Property (IP) rights of another. This covers trade secrets, trademarks, patents, and copyrights. Most often, licensing refers to the rights of exclusivity granted by patents and trademarks. Such contracts or agreements can be between individuals, corporations, and governments.Who is Licensing?As a Licensing Professional, your task boils down to two basic flavors: 1) licensing your client's IP to someone for money; or 2) paying money to license from someone else. Part of the job of a Licensing Professional includes the marketing of the IP, valuation of IP, negotiating terms of agreements, and drafting the agreements.
The internet plays a vital role in the licensing arena, and is an effective tool for finding potential licensees, uncovering infringers, and determining the value of the technology by looking at the financial data of the licensee and the industry. Whether negotiating with a licensee or a licensor, it is necessary to gain as much information as possible regarding the substance of the agreement. The internet provides a timely and efficient method to gather this information.
* The easiest Licensee is one that is found infringing.
The licensing field has been a hot bed of activity as parties have realized the benefits in mutual cooperation and collaboration. The extreme expense of research and development along with the associated risks has led many parties to form affiliations and consortiums to spread the risk and cost among many parties. Domestic and international corporations are also pursuing licensing of their respective IP as a significant source of profits.
Private Sector
The private sector has been lagging in technology transfer, but recent activity indicates this area is changing quickly. Companies used to only cross-license or file infringement actions. Now, some of the high tech companies are posting their patents on their web sites and providing terms for licensing of their technology. Patent attorneys and commercial technology transfer companies are springing up on the internet, peddling their technology wares.
Government
In 1986, Congress passed the Cooperative Research and Development Agreements (CRDA) authorizing federal organizations to engage in technology transfers with the private sector. Government agencies, including all branches of the military are actively pursuing licensing as a source of revenue for their particular department.The government allows all the federal agencies to pursue licensing of any technology that exists in their respective portfolios (excluding secret programs). This includes NASA, DOE, USDA, etc.... all of which have extensive tech transfer programs in place. Overall, the government and military are the leading sources of tech transfer information available on the internet.
Military
The military has seen technology transfer as a potential source of revenue, and the government has encouraged military departments to actively seek out licensing opportunities. The navy, air force, and army departments all have various technology transfer processes in place.
Academia
How do you match Licensors with Licensees?The educational institutions have always been a major source of research of development activities. Some academic institutions are developing significant technological innovations which are owned by the institution. Corporations are also contracting research and development activities with the academic institutions with the rights of the discoveries negotiated by the parties. Many colleges now have technology transfer programs in place to facilitate the process of licensing and contract negotiations. MIT, Perdue, Stanford, Lawrence Berkley, Univ. of Washington, Univ. of Michigan, Northwestern, University of British Columbia, Columbia University, Texas A&M, etc... all have Technology Transfer Programs already in place.
As a Licensor, there are several ways to actively seek licensing partners. Merely posting your patents on a website is usually not a successful manner of 'selling' the technology. As a licensing professional, you have to market the technology. You have to find those parties that would benefit from licensing the technology, or those parties that might be infringing. A well drafted letter to either of the parties detailing the aspects of the technology and how it relates to their efforts will produce some potential licensing situations.How to estimate the value of the License?Technical Conferences are good for disseminating your technology to the individuals most interested. Most fields have organizations and committees that can be joined, and almost all the technical conferences are posted on webpages. Membership provides access to the membership list, which can be used as a directed mailing list.
You should also use the internet search engines to find other companies in the field. Next, you should use the various news services and providers. The search can be done on the multitude of free sites, or can be farmed out to commercial services. These services, such as Nerac, can provide a lot of information in a summarized format. A lot of the information is available from public sources, but what is the best use of your time? Additionally, most of the news sites and search engines offer some form of clipping service than can be used to set up a user profile. The user profile identifies the technology or companies of interest, and the clipping service automatically forwards information that crosses the newswires.
A further search of the homepages of those in the field can be a potent weapon. Sometimes the companies disclose enough information about their products to determine infringement or reveals how your technology would enhance their product. Most sites allow you to order the brochures and marketing literature, and if approved, can even order the product right from the web page.
In order to estimate the value of the technology, you have to look at the target companies financials and the industry information. A licensee is only going to pay less than what they are making on the product. Its a guessing game at best. Look at the company's financial data from the various internet sources and try to ascertain the amount of money derived from that particular product. Look at the others in the field to determine their financial information.How Do I Draft an Agreement?Next check out the market/industry analysis and forecasts and try to figure out how that segment is expected to do in the next few years. Most licenses are short term because of the nature of technology. Throw all the numbers together and try to find a number that's not too obscene.
As a licensor, the licensing provides an opportunity to recoup the research and development costs involved in creating the technology. However, the cost to develop the technology is rarely a major component of the licensing value. As a licensee, you are seeking to license the technology if it provides a financial gain. If the price is too high, alternatives will be found. The market sets the price for most agreements.
Luckily, many of the sites provide examples of agreements on-line. Try to find an example of a License that is close to your field and use it as a guideline to start your own. Copying an Agreement and modifying it to fit your needs will work, as long as you the new Agreement meets your goals and doesn't contain any meaningless clauses left over from the previous Agreement.
Licensing Executives Society (LES) homepage.
http://www.les.org
IPO is a private organization of those interested in intellectual property happenings.
http://www.ipo.com
American Intellectual Property Law Association homepage, an association of 10,000 attorneys practicing intellectual property. Homepage has useful links to other IP sites and maintains current legislation, events, CLE's, and miscellaneous topics.
http://www.aipla.org/
Lycos is a search engine that includes a topical category listing, that can access business, industry, and company information including stock prices.
http://www.lycos.com
Excite is a search engine that includes a topical category listing, that can access business, industry, and company information including stock prices. Also has easy access to Usenet Newsgroups, and has a built-in clipping service.
http://www.excite.com
Altavista is a search engine that includes a topical category listing, that can access business, industry and company information including stock prices. Comprehensive database search capability with the fastest searching, but does not have the 'bells and whistles' of the other sites.
http://www.altavista.digital.com
Yahoo is a search engine that includes a topical category listing, that can access business, industry, and company information including stock prices. Subject matter index of materials that can be used to search broad topics in an efficient manner.
http://www.yahoo.com
NERAC is a news service that allows its members to track technology, competitors, issuing patents or trademarks. For a fee, Nerac has specialists that search a variety of databases and summarize the results.
http://www.nerac.com
Knowledge Express - Technology transfer database connected to the LES homepage. Private and comprehensive set of databases reviewable only for a fee.
http://www.KnowledgeExpress.com/ke2/database.html
PR Newswire site, that provides current information in many fields by tracking the wire services. Allows you to setup a personal tracking system and will email all information that crosses the wire referencing the term(s) or company name placed in the system.
http://www.prnewswire.com/
Business wire site that provides current information in many fields by tracking the wire services. Allows you to setup a personal profile and will email all information that crosses the wire referencing the term(s) or company name placed in the profile for $15/mo fee.
http://www.businesswire.com/
AT&T Business Network, provides categories of information, including Industry information, company data, news, regional resources, and government information.
http://www.bnet.att.com/
A technology news source with engineering specialties and general news. Not the greatest interface.
http://www.industry.net/
IPO Central provides information on companies that are not yet on the public exchanges, but in the process of going public. Has a search engine to look for these newer companies.
http://www.ipocentral.com/
American Business Information Service. Has some free search services, but also provides an in-depth analysis for a $3 fee. Might be worth it if it saves you research time.
http://www.lookupusa.com/
CNET computer network site, has a lot of computer and software related links and news, but not comprehensive.
http://www.cnet.com/
US Securities and Exchange Commission, the agency publishes the filed reports from all incorporated corporations. Able to view the company's quarterly and annual statements and reports.
http://www.sec.gov
Streetnet online investor's guide that covers limited topics and firms, with some analysis of financial data.
http://www.vestnet.com/
AT&T business network Financial Profiles, lists a limited number of companies to search. Provides news and financial information about any of those listed.
http://www.bnet.att.com/companies/financials.htm#Profiles
Market Guide Incorporated offers a different style of gaining information either by company name or by the industry. Provides a backlog of data associated with the company or industry. Has a limited number of companies/industries in the database, great place to find information on the companies listed. Gives balance sheet information, and the financial ratios. Even has a simple search engine allowing a stock symbol search.
http://www.marketguide.com/
Wall Street Research Net site, that provides a comprehensive business research tool by providing over 250,000 links of business and financial information.
http://www.wsrn.com
The Invest-O-Rama Internet Directory for investors, provides an easy interface to many financial tools and business profiles. Most sites are free, but require a registration. Shows many of the financial details in a variety of formats.
http://www.zacks.com/
The USDA transfer site with some information regarding licensing of federal patents and other related materials. Lists other transfer links.
http://www.nal.usda.gov/ttic/t2info.htm
Argonne National Laboratory technology transfer site of the DOE's laboratory. Shows examples of agreements and gives licensing information for their technology.
http://www.anl.gov/ITD/HOMEPAGE/itd.html
Jet Propulsion Lab Entrepreneur homepage, and gives some basic information on intellectual property specifically relating to licensing. Also has examples of non-disclosure agreements and license agreements.
http://www.lightbulb.jpl.nasa.gov/index.html
Jet Propulsion Lab technology transfer and commercialization page. Provides information on licensing NASA's technology, as well as other information and links. Provides link to the various patents that are available for licensing.
http://www.137.79.70.19/tu.html
INEL is a lab under the DOE and is experimenting with exploiting their technology.
http://www.inel.gov./technology_transfer/overview.html
Information about the Federal Technology Transfer Act of 1986 provided by ITS, along with their explanation of licensing efforts.
http://ntia.its.bldrdoc.gov/bluebook/pg19ftta.html
DOE facilities in conjunction with Lockheed Martin, that provides links to the Oak Ridge National Laboratory and Lockheed Martin Energy Systems.
http://www.ornl/patent/lmes_ott.html
Oak Ridge National Laboratory homepage with links to various other informative sites including a listing of their technology and the terms of licensing. Also has basic IP information.
http://www.ornl/patent/ornl_ott.html
US Geological Survey technology transfer information including all the patents and pending patents available for licensing.
http://www.usgs.gov./bio/USGS/tech-transfer/patent.html
National Institute of Health - Office of Technology Transfer, describes the NIH tech transfer program, and is the lead Public Health Service agency for technology transfer. Has links to agreements and available technologies, as well as other sites of interest.
http://www.nih.gov/od/ott/
Canadian Industrial Innovation Centre - World Bank of Licensable Technology, and the Technology Transfer Database. Sounds impressive, but not as comprehensive or world reknown as the title indicates. Has a few links to available technologies.
http://www.innovationcentre.ca/what/wblt/wblt.htm
Stanford University Technology Transfer information site, contains links to other technology transfer offices, patent information links, and miscellaneous technology transfer links.
http://www-leland.stanford.edu/group/OTL/external.html
Columbia University technology transfer site, and gives some bland description of the goals of their licensing.
http://www.cc.columbia.edu/cu/research/technology.html
NTTC technology transfer foundation site, with basic information covering all aspects of licensing. Gives links to other licensing professionals, and organizations, as well as example agreements.
http://iridium.nttc.edu/nttcnews/c_over.html
Technology transfer research site including research links, general law links, as well as IP law sites and organization links.
http://www.research.umbc.edu/~gleason/ttris.html
Texas A&M Licensing Office with downloadable forms and basic description of their licensing efforts.
http://engineer.tamu.edu/tlo/
Grants development site of California Polytech that lists 10 other educational technology transfer programs, and a link to other organizations involved in technology transfer.
http://www.calpoly.edu/~grants/techtransfer.html
University of Washington Office of Technology Transfer site, that lists about 50 technology transform programs and related sites.
http://www.cary.u.washington.edu/ott/TechTransfer.html
Mississippi State University technology transfer program, gives explanation of their goals, but no links to additional information.
http://teclink.net/mbj/mbj091195/msu.html
Army's attempt at licensing its technology to the private sector. Lists sample agreements.
http://polar.pica.army.mil/ardec/crda/techtran.html
Technology transfer legislation site with links to the legislative history, and various bills, executive orders, and statutes pertaining to tech transfer.
http://www.dtic.dla.mil/techtransit/laws/techtrans_law.html
Excellent description of the federal technological transfer possibilities. Good history and background information.
http://www-tech.robins.af.mil/techxfer/primer.htm
Naval Research Laboratory technology transfer page. Not much detail and not well laid out.
http://infoweb.nrl.navy.mil/~techtran/intropage.htm
Department of Defense technology transfer website with a few additional links to other sites. Additional links categorized into separate categories and each contains multiple links to other technology transfer sites.
http://www.dtic.dla.mil/techtransit/index.html
Rome Laboratory technology transfer homepage. Has several tech transfer related links for technology relating to signal, speech, image processing, communications, electromagnetics, and photonics.
http://www.rl.af.mil/Technology/rl-techno-main.html
Cooperative Research and Development Agreement (CRDA) detailed description including application where CRDA applies.
http://www.nawcwpns.navy.mil/techtransfer/t2_2.html
Paragon Solutions technology transfer and commercialization site, explaining the background and directions of their services.
http://www.paragonbiz.com/techno.html
A law firm site with nice discussion and options, but no real substance yet.
http://www.rosenman.com/techtran.htm
Attorney Michael Kroll's attempt to post inventions and wait for people to license the technology posted.
http://www.invention.com
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