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UNECE April 2009 Commercialization of IPR A Business Perspective Jason Bucha, Compliance Counsel April 2, 2009.

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Presentation on theme: "UNECE April 2009 Commercialization of IPR A Business Perspective Jason Bucha, Compliance Counsel April 2, 2009."— Presentation transcript:

1 UNECE April 2009 Commercialization of IPR A Business Perspective Jason Bucha, Compliance Counsel April 2, 2009

2 Dolby Laboratories, Inc. Dolby Laboratories is the global leader in technologies that are essential elements in the best entertainment experiences. Founded in 1965 and best known for high- quality audio and surround sound, Dolby creates innovations that enrich entertainment at the movies, at home, or on the go.  Over 670 licensed consumer electronics manufacturers and software developers in 35 countries  Over 3.4 Billion licensed products reported sold 2UNECE April 2009

3 The Importance of Innovation and IPR Commercialization to Business Success  Stay competitive  Better products and efficiencies  Fund research and development  Company valuation 3UNECE April 2009

4 Broad Benefits of Innovation and IPR Commercialization  Increased competition  Better consumer experiences  Increased jobs and spending  Technology diffusion  General uplift of experience and capability 4UNECE April 2009

5 IPR BUSINESS STRATEGY 5UNECE April 2009

6 IPR Generally  Types of IPR  Patents, trademarks, copyrights, trade secrets, know-how  Sources of IPR  Internal research and development  Co-development  Acquisition from third parties  Licensing (In) 6UNECE April 2009 IPR Business Strategy

7 Patent Portfolio Strategy  Barrier to competitors  Offensive  Assertions against infringers  Defensive  Shield against third party IPR assertions  Cross-licensing option  Removal of threats by acquisition of underlying rights  Considerations  Key patents vs. Broad coverage  Territories 7UNECE April 2009 IPR Business Strategy

8  Differentiate your products and services  Develop goodwill that can be used in many ways  Relative ease of enforcement  Considerations:  Conduct searches prior to investment  Territories 8UNECE April 2009 IPR Business Strategy Trademark Portfolio Strategy

9 Internal Management of IPR  Periodic internal audits  Invention disclosure policy  Education and awareness  Invention review committee  Applications and registrations  For TMs: Education regarding proper use  Employment Agreements  Non-Disclosure Agreements (NDAs) 9UNECE April 2009 IPR Business Strategy

10 Preparing for Commercialization  Market analysis  Financial  Market pull vs. Technology push  Competitors’ IPR  Continual evaluation of innovation from the perspective of commercialization  IPR valuation 10UNECE April 2009 IPR Business Strategy

11 IPR Commercialization Strategies  “Do it yourself”  Consider outsourcing certain aspects  Joint Venture / Spin-Out  Sale of IPR  Licensing 11UNECE April 2009 IPR Business Strategy

12 Licensing as a Business Strategy  Benefits  Sharing of risk  Less resource commitment  Shorter time to market  Drawbacks  Loss of control  Dependent on licensees  Sharing of IPR value with licensee 12UNECE April 2009 Granting someone the right under your IPR to make, use or sell a product, process or service in return for payment or other consideration.

13 Licensing Considerations  What is being licensed?  Who should be licensed?  What should the scope of the license be so as to maximize value and achieve goals?  Geographic, field of use, exclusivity, sublicensing, term  What payment terms are most appropriate?  Flat fee, royalties, minimums, milestones, combination  Who will pay? 13UNECE April 2009 Licensing as a Business Strategy

14 Licensing Considerations  What responsibilities will the company have to the licensee?  Deliverables, support, maintenance, etc.  Standards (if applicable)  Patent Pools 14UNECE April 2009 Licensing as a Business Strategy

15 Administration of a Licensing Program  Research and Development  Sales and Marketing  Licensee Support  Accounting  Legal  Compliance 15UNECE April 2009 Licensing as a Business Strategy

16 The License Agreement  There is no “Standard License Agreement”  Agreements must account for differences in:  Licensing strategies  Who is being licensed?  Risk tolerance  Market position  Territory and Jurisdiction 16UNECE April 2009

17 The License Agreement – Key Terms  License Grant  Grant Back  Trademark Terms  Marking Requirements  Payment Terms  Reporting Obligations  Audit Rights  Confidentiality  Publicity  Notification of Infringement  Term of Agreement  Termination  Bankruptcy  Continued… 17UNECE April 2009 The License Agreement

18 The License Agreement – Key Terms  Warranties  Indemnification  Assignment Rights  Notice Requirements  Governing Law  Dispute Resolution 18UNECE April 2009 The License Agreement

19 Thank you! Jason Bucha +1 425 645 5216 jbucha@dolby.com www.dolby.com

20 20Confidential Information


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