Samenvatting Strategic IP
management Class 4:
Class
Moneti zing innovati ons: 2 routes
A company can commercialize its own innovation to get an return on investment (ROI) OR
A company can outlicense their IP to other firms
Licensor gives permission to the licensee to use the technology <-> Licensee gives
payments to the licensor for the permission
For companies to choose for outlicensing, an important trade off has to be made
o Revenue generation you get money from licensee for the use (good for
short-term)
o Revenue dissipation you strengthen or create a competitor by licensing
your innovation to someone whoch can lower the revenue on the long-term
Study of Gambardella what are the determinants to outlicense your innovation?
o Small companies are more often licensors than big companies
o Large companies outlicense more the non-core innovations (those who are
not essential for them, who don’t use them anymore)
o Platform technologies technologies that can be used for different
applications (fe RNAi) are great for licensing
Key takeaway = licensing is popular & important
Barriers to outlicensing?
o Nr 1 = potential loss of competitive/technological edge (competitive concern,
revenue dissipation)
o Rest on figure
, License agreement
During negotiation it is established what is put in the license agreement some key terms
are
Scope
o Exclusive or non-exclusive?
o Licensor reserves rights? (fe for certain applications or geographies, the
technology cannot be used by the licensee)
o Sub-licensing allowed? = licensee not only able to use the technology but also
further license it to other companies
o Are licensee improvements licensed? Licensor is allowed to license further
innovations by the licensee build on the technology of the licensor
In this case a technology grant-back clause has to be added to the
contract = requires a licensee to grant the original licensor rights (or
ownership) of any improvements, modifications, or new technologies
the licensee develops based on the licensed intellectual property
When to include such a grant-back clause? (study by laursen) A
grant-back clause is recommended when the licensed technology is a
core element of the licensor's portfolio, allowing for control over
future improvements. However, the likelihood of such a clause
decreases when the technology is essential to the licensee's core
activities, as this party will then have a stronger negotiating position to
retain control over its own innovations.
Obligations
o Risk of exclusive licensing = licensee can ‘sit’ on the technology (no progress
will be made or the innovation can even not be used) solution =
performance obligations such as development dates, minimum sales,
milestone-based royalty rates
o The licensor himself can also have obligations such as supply of information,
training services, meetings & warranties on validity of licensed technology?
Can also be interesting for licensor bcs this can provide useful
feedback for the licensor can then lead to follow-up inventions
(discussed in paper of Kelchtermans, licensor typically biotech,
licensee typically big pharma)
this makes the trade-off for licensing more complex due to the
added learning through interaction factor
management Class 4:
Class
Moneti zing innovati ons: 2 routes
A company can commercialize its own innovation to get an return on investment (ROI) OR
A company can outlicense their IP to other firms
Licensor gives permission to the licensee to use the technology <-> Licensee gives
payments to the licensor for the permission
For companies to choose for outlicensing, an important trade off has to be made
o Revenue generation you get money from licensee for the use (good for
short-term)
o Revenue dissipation you strengthen or create a competitor by licensing
your innovation to someone whoch can lower the revenue on the long-term
Study of Gambardella what are the determinants to outlicense your innovation?
o Small companies are more often licensors than big companies
o Large companies outlicense more the non-core innovations (those who are
not essential for them, who don’t use them anymore)
o Platform technologies technologies that can be used for different
applications (fe RNAi) are great for licensing
Key takeaway = licensing is popular & important
Barriers to outlicensing?
o Nr 1 = potential loss of competitive/technological edge (competitive concern,
revenue dissipation)
o Rest on figure
, License agreement
During negotiation it is established what is put in the license agreement some key terms
are
Scope
o Exclusive or non-exclusive?
o Licensor reserves rights? (fe for certain applications or geographies, the
technology cannot be used by the licensee)
o Sub-licensing allowed? = licensee not only able to use the technology but also
further license it to other companies
o Are licensee improvements licensed? Licensor is allowed to license further
innovations by the licensee build on the technology of the licensor
In this case a technology grant-back clause has to be added to the
contract = requires a licensee to grant the original licensor rights (or
ownership) of any improvements, modifications, or new technologies
the licensee develops based on the licensed intellectual property
When to include such a grant-back clause? (study by laursen) A
grant-back clause is recommended when the licensed technology is a
core element of the licensor's portfolio, allowing for control over
future improvements. However, the likelihood of such a clause
decreases when the technology is essential to the licensee's core
activities, as this party will then have a stronger negotiating position to
retain control over its own innovations.
Obligations
o Risk of exclusive licensing = licensee can ‘sit’ on the technology (no progress
will be made or the innovation can even not be used) solution =
performance obligations such as development dates, minimum sales,
milestone-based royalty rates
o The licensor himself can also have obligations such as supply of information,
training services, meetings & warranties on validity of licensed technology?
Can also be interesting for licensor bcs this can provide useful
feedback for the licensor can then lead to follow-up inventions
(discussed in paper of Kelchtermans, licensor typically biotech,
licensee typically big pharma)
this makes the trade-off for licensing more complex due to the
added learning through interaction factor
