15547297
Description
Mind Map by Alejandro Sierra, updated more than 1 year ago
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Created by Alejandro Sierra
over 5 years ago
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Patent License Negotiation: Best
Practices
- Preparing To
Negotiate
- Effective
negotiation begins
with effective
preparation.
- Assembling the right team
means effective negotiation
- The Team
- A deal team who includes: a Business Development
Executive, a Scientific or Technical Expert, a Decision
Maker and a Licensing Attorney
- the team should evaluate and determine the marketing,
technical, sales and services strengths of itself and the other
party in the field of the patented technology
- the team should evaluate and determine the marketing,
technical, sales and services strengths of itself and the other
party in the field of the patented technology
- A deal team who includes: a Business Development
Executive, a Scientific or Technical Expert, a Decision
Maker and a Licensing Attorney
- The Team
- Terms
Sheet
- It is helpful for parties to exchange a
term sheet prior to the initial
negotiation meeting.
- including: the licensed product or process; licensed territory; license
fee and royalty; technical information and training required to
develop and manufacture, sell and service the licensed product, and
who will be responsible for same; sales and service support; degree
of exclusivity, and duration of the license.
- including: the licensed product or process; licensed territory; license
fee and royalty; technical information and training required to
develop and manufacture, sell and service the licensed product, and
who will be responsible for same; sales and service support; degree
of exclusivity, and duration of the license.
- It is helpful for parties to exchange a
term sheet prior to the initial
negotiation meeting.
- Drafting The Contract
- The party drafting the contract
is always in the more favorable
position
- By drafting the contract, a party is better
able to evaluate any subsequent
modifications or changes to the original
draft and how such changes affect its
primary goals
- The party drafting the contract
is always in the more favorable
position
- Effective
negotiation begins
with effective
preparation.
- In Licensing, the negotiation process is a key
determinant of the future business relationship
between stakeholders
- The Negotiation
- The terms of a licensing contract
reflect the allocation of risk between
the parties of the potential future
development and marketability of
the patented technology
- the developmental stage of the
technology and the scope of the
license are risk factors that affect
the amount of investment
required to develop and market
the technology and the
competitiveness of the
subsequent products or services.
- the developmental stage of the
technology and the scope of the
license are risk factors that affect
the amount of investment
required to develop and market
the technology and the
competitiveness of the
subsequent products or services.
- Valuation approaches
- Cost Method: cost of developing or purchasing the
technology.
- Market Method: the value is
determined by evaluating the value
assigned to comparable technology
licensed recently,
- Income Method: values
technology by the total
estimated annual returns
- Cost Method: cost of developing or purchasing the
technology.
- Developmental stage of
invention
- Patented inventions that are in the early stage of
development often require substantial investment
and development before a commercially viable
product is produced
- Patented inventions that are in the early stage of
development often require substantial investment
and development before a commercially viable
product is produced
- Exclusivity and field of Use
- refers to whether the licensor has
licensed the invention/technology to
multiple licensees, whereas the field
of use is the circumstances for which
the licensor has granted the licensee
permission to make, use and sell the
patented technology
- The licensor should aim to grant the narrowest field of
use required by the licensee so that the licensor can
retain the opportunity to exploit other potential licenses
- refers to whether the licensor has
licensed the invention/technology to
multiple licensees, whereas the field
of use is the circumstances for which
the licensor has granted the licensee
permission to make, use and sell the
patented technology
- The terms of a licensing contract
reflect the allocation of risk between
the parties of the potential future
development and marketability of
the patented technology
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