15397498
Beschreibung
Mindmap von Lorena Benavides, aktualisiert more than 1 year ago
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Erstellt von Lorena Benavides
vor mehr als 5 Jahre
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Patent License Negotiation: Best Practices
- PREPARATION PROCESS
- DEAL TEAM
- Is in charge of conducting due diligence and negotiate the license
- It should meet and reach an understanding
for the deal, responsibilities and roles of
each team member
- Identify, assess & prioritize interest of their client.
Review strength and breadth of patent protection.
Conducts a right-to-use study. Review
developmental stage of patented technology.
Evaluate and determine the marketing, technical,
sales and services strenghths. Evaluate potential
best alternatives. Terms and conditios omitted
before talks
- Identify, assess & prioritize interest of their client.
Review strength and breadth of patent protection.
Conducts a right-to-use study. Review
developmental stage of patented technology.
Evaluate and determine the marketing, technical,
sales and services strenghths. Evaluate potential
best alternatives. Terms and conditios omitted
before talks
- It should exchange a Term Sheet prior to the
initial negotiation meeting covering major
issues in a potential deal in outline form.
- Licensed product or process. Licensed
Territory Licenced fee and royalty
Licensed Techonology Information,
Licenced Training Required Degree of
eclusivity Duration of the license
- Licensed product or process. Licensed
Territory Licenced fee and royalty
Licensed Techonology Information,
Licenced Training Required Degree of
eclusivity Duration of the license
- It should establish Deadlines to reveal the
intentions & interest in the licensing
agreement by the other party
- These steps include: Initial meeting, drafting
the letter of understanding, meeting to review
the draft agreementt, revisions, finalizing the
licensing agreement & executing the licensing
agreement
- These steps include: Initial meeting, drafting
the letter of understanding, meeting to review
the draft agreementt, revisions, finalizing the
licensing agreement & executing the licensing
agreement
- It should do a workground for open dialog
By providing a nondisclosure agreement.
- License & scope, enforcement rights,
financial agreeement, additional
patent prosecution,
- License & scope, enforcement rights,
financial agreeement, additional
patent prosecution,
- It usually includes a...
- Business Development Executive
- Finds the deal & brings
parties to the table. Leader
of the deal team. Keeps
negotiation process moving.
Ensures other team
members fulfill their tasks.
- Finds the deal & brings
parties to the table. Leader
of the deal team. Keeps
negotiation process moving.
Ensures other team
members fulfill their tasks.
- Scientific & Technical Expert (s)
- Undestands the scope &
nature of patent rights.
Provides Expertise. Conducts
diligence research related
with technology.
- Undestands the scope &
nature of patent rights.
Provides Expertise. Conducts
diligence research related
with technology.
- Decision Maker
- The one who has the
authority to commit a
party to particular deal
terms. Authority to bind
the company within
certain parameters.
- The one who has the
authority to commit a
party to particular deal
terms. Authority to bind
the company within
certain parameters.
- Licensing Attorney
- Experienced patent attorney
in charge of commiting the
terms of the agreement;
desires of the parties, to
writing. Assists negotiations,
giving suggestions on deal
structures or terms where
parties reach an impase.
- Experienced patent attorney
in charge of commiting the
terms of the agreement;
desires of the parties, to
writing. Assists negotiations,
giving suggestions on deal
structures or terms where
parties reach an impase.
- Business Development Executive
- It should consider Drafting the contract so
as to have the most favorable position
- Ensures inclusion of desiring provisions. It can
evaluate any subsequent modifications & changes
and how they affect their goals
- Ensures inclusion of desiring provisions. It can
evaluate any subsequent modifications & changes
and how they affect their goals
- It should meet and reach an understanding
for the deal, responsibilities and roles of
each team member
- Is in charge of conducting due diligence and negotiate the license
- DEAL TEAM
- THE NEGOTIATION PROCESS
- Valuation Aproaches
- Cost, Market or
Income Method
- Cost, Market or
Income Method
- Propietary Position
- Weak or stronginterest to
question a patent; thid
parties; discounts on royaltiy
- Weak or stronginterest to
question a patent; thid
parties; discounts on royaltiy
- Developmental
Stage of Invention
- Early stage means
investment; lower
licensing fees and
royalties
- Early stage means
investment; lower
licensing fees and
royalties
- Exclusivity and Field of Use
- permision to make, use and
sell the patented
techonology. Options for
additional field of use.
- permision to make, use and
sell the patented
techonology. Options for
additional field of use.
- Payment Terms
- signing fee, reimbursement,
ongoing payment, milestone
payments, minimum annual
royalties and percentage
royalty on sales. Suplemental
remuneration or other types of
income.
- signing fee, reimbursement,
ongoing payment, milestone
payments, minimum annual
royalties and percentage
royalty on sales. Suplemental
remuneration or other types of
income.
- Rights to Improvements
- Provisions to address the
ownership or current or
future improvemnts of the
techonology: Negotiate
who will own the rights to
the improvements.
- Provisions to address the
ownership or current or
future improvemnts of the
techonology: Negotiate
who will own the rights to
the improvements.
- Valuation Aproaches
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