Extracting Value from IP – Strategic Alliance

The strategic alliance is a business arrangement usually done in order to gain access to markets to which company would otherwise be denied. IP is often viewed as a sweetener for the deal. The process of selecting and valuing IP for such deals is again similar to that of licensing out in the [...]

2021-10-08T14:16:25-07:00

Extracting Value from IP – Sale

Sale of intellectual property vis-a-vis licensing-out, provides a Corporation with essentially no ongoing liability or expenses.  The transfer of ownership is usually for a monetary consideration often paid upfront versus being extended over a long period of time (as is sometimes the case for licensed art). The maintenance and potential litigation expenses are [...]

2021-10-08T14:16:32-07:00

Extracting Value from IP – Joint Ventures

Contributing IP rights to a research or business venture with another party again follows the process outlined above in the licensing-out section.  Since the other party will be contributing one or more complementary business assets in lieu of only monetary payments, these deals are more complicated to construct.  The variation from the licensing [...]

2021-10-08T14:16:51-07:00

Fourth Step in Portfolio Mining Process for Licensing Revenue – Perform Deal Maintenance and Monitoring

Royalty Payment Audit Process The execution of a license agreement is not the conclusion of the licensing strategy. The "Royalty Payment Audit Process" figure shows the activities that should follow. After lengthy and difficult commercial negotiation many licensors and licensees don’t pay enough attention to the royalty clauses. The following 30 business terms [...]

2021-10-08T14:17:05-07:00

Third Step in Portfolio Mining Process for Licensing Revenue – Negotiation Process Flowcharts

Licensing Negotiation Process Flowchart Once a proposal binder has been assembled that includes the aforementioned elements, the target company should be contacted. The “Licensing Negotiation Process Flowchart” figure shows the negotiation process. As one of the last steps in the negotiation process the value of the licensing deal is determined. As mentioned previously [...]

2021-10-08T14:17:15-07:00

Third Step in Portfolio Mining Process for Licensing Revenue – Creating Proposal Binders

The proposal binders may include the following sections: a brief description of the company and its licensing activity; high-level description of the intellectual assets to be licensed; summary of the applicable market segment; information regarding the products and services of the target licensee; marketing materials and press releases regarding the intellectual assets to [...]

2021-10-08T14:17:28-07:00

Placing a Value on Patents – Identification of Licensing Opportunities from Patent Citations

Citation Maps Also Assist in Locating Licensing Opportunities Citation maps also assist in locating licensing opportunities. In addition to portfolio measures, visualization techniques based on individual patents also help identify potential licensees and illustrate their needs.  An example of a citation tree is shown to illustrate how a client’s patent is being cited [...]

2021-10-08T14:18:46-07:00

Placing a Value on Patents – Identification of Licensing Opportunities

Identification of Licensing Opportunities One means to identify potential licensing opportunities is to look at the total number of citations of the company’s patent portfolio by other entities. The “Identification of Licensing Opportunities” figure shows how many times other entities cited a particular company’s portfolio.  Potential licensees might thus be not only the [...]

2021-10-08T14:18:54-07:00
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