1. Welcome and Introduction: Market Timing and Licensing Options
Varda N. Main
Director, Technology Licensing Office

2. Intellectual Property Rights
Trade Secret
Know-how
Show-how
Patents
Trademarks
Copyright
Mask Works

3. Technology Transfer
Collaborative process whereby the products of R&D flow from a source to the (next) user
Numerous transfer options including:
Licensing
To an established company
To a start-up company
Alliances
Use of facilities
Consulting
Outright sale

4. Packaging of Technology for Transfer
Licensing needs to be win-win situation
What must the licensor do to ensure that the licensee will be able to fully use the licensed technology?
How to identify all the know-how, show-how and technology needed by the licensee?
What other information may be needed in negotiating a technology transfer?
tax credits
financing
marketing

5. Determining Position in the Technology Life Cycle
Technical performance obsolescence
Technical feature obsolescence
Cost obsolescence
Safety obsolescence
Shifts in consumer preferences

6. What do you really have? Know the History
Base patents and continuations
Technically related patents and copyrights
Software versions
Previous agreements
Outside authors and inventors
Funding sources

7. The View on the Other Side of the Table
Perception of business risk.
Who’s bringing what to the table?
What are the 3 points of difference for the technology/opportunity?
What would make a user switch to this product/process/service?
What is needed to bring this to the commercial marketplace?

8. Importance of Timing
Commercialization and patent prosecution timelines must coincide - “Window of Opportunity”
Understand the technology & IP life cycles
Understand the impact of competing technologies (i.e., first to market)
Durability of competitive advantage
Fit with business or corporate strategy

9. Value of The Portfolio Value in the eye of the beholder
A portfolio is more than the sum of its parts
Value depends on how the portfolio is protected and the strategy to sell it.

10. Portfolio Valuation What is the competition? Is your portfolio unique?
Who is willing to buy?
Different Parties = Different values
How critical is technology/portfolio to the outside?
What are they willing to pay?

11. Pricing Technologies Market value of technology
Uniqueness of technology
Competitive position
Type of protection for the technology
Stage of technology development
Improvement provisions of license
Exclusivity
Field of use
geographical
market sector

12. Rights under a License To make To use To disclose to others To sell
by publication
in a marketed product
in a service manual
as a sub-license to a third party
to lease
To sell

13. Types of Licenses
Exclusive - there can only be one licensee; the licensor has no rights to exploit the technology/product
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

14. Types of Licenses Irrevocable/Revocable for cause
Territory: World-wide/Limited to named geographic regions
Field of use: Market-specific
Royalty-bearing/Royalty-free

15. 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

16. Services provided by TLO
Determining IP ownership issues
Marketability assessment of inventions
Patenting of inventions
Registering copyright
Registering trademarks
Valuing commercial worth of technologies
Developing commercialization strategies for technologies
Marketing technologies available for license
Conducting license negotiations
Administering licenses
Chairing the Technical Review Panel and Intellectual Property Policy Committee
Outreach and training

17. Your role and responsibilities as a RIT inventor or author
To conduct thorough searches (and periodically update these searches) of the published literature and patents to determine if your creation is novel
To promptly and completely disclose your creations to RIT
To assist RIT in seeking IP protection on selected technologies
To assist RIT in seeking licensees for selected technologies
To enjoy the 50% inventors’ share of licensing revenues!

18. TLO website – www.rit.edu/tlo
General information on intellectual property and licensing
RIT Invention Disclosure Form
RIT policies relating to IP and licensing
Sample agreements and standard IP terms
Technologies available for license
Links to many other related resources

19. For more information…….
Technology Licensing Office
Varda N. Main, Director
4018 Eastman Building (Bldg. 1)
(585)