Technology Licensing ResourcesSecrets of the Power Searchers

Pierce Law Information Literacy Series

©2009 Professor Jon Cavicchi, Franklin Pierce Law Center

•Information literacy = lifelong legal learning, mastering content, extending investigations, self-direction, controlling learning. –Determine the extent of information you need –Access the needed information effectively and

efficiently –Evaluate information and its sources critically – Incorporate selected information into your knowledge

base –Use information effectively to accomplish a specific

purpose –Understand the economic, legal, ethical & social issues

surrounding the use of information

Licensing is crosses neat categories intersecting many areas…

• Law (US…foreign…int’l)– Contract– IP– Antitrust– Choice of laws

• Business– Valuation– Management

• Politics, economics,development….

What can be in a license agreement?

Licensing is one tech transfer tool…

• Licensing is only one form of tech transfer solution• Technology transfer is the process by which a developer of

technology makes its technology available to a commercial partner that will exploit the technology. -WIPO

• Other transfers mechanisms – “forming alliances”– Inter-Institutional Agreements (CRA)– Option Agreements– Material transfer agreements (bailment)– Assignments– partnerships with industry without entering a license agreement (PPP)– Patent pool– Start ups & spin-offs

Reflected in sources

• Types of materials– Learned Treatises– Practice treatises

• Strategies

– Form books– Directories

• Royalty rates

– CLE Materials– Newsletters– Journals

Always remember in IP research…

You can use tool dedicated to licensing professionals or

general tools that have licensing content

Major Legal Publishers

Always check the IP Library

Milgrim on Licensing• Licensing characteristics of patents, trade secrets, trademarks and copyrights• Licensing of multiple intellectual property• Antitrust considerations• The effects of NAFTA on licensing• Drafting and sample contract clausesPatent Licensing Transactions• Royalty bases and rates• Domestic and foreign patent licensing• AssignmentsTerritorial limitations and duration• Termination of agreements• AntitrustU.S. taxation of domestic and foreign patent transactions• Government and university licensing

http://west.thomson.com/store/SearchResults.aspx?n=0&pagesize=50&findingmethod=Search&ntt=licensign&filter_type=adv_bkt_Books

http://www.aspenpublishers.com/search/fbsearch.asp?k=licensing&nsrt=&stag=

http://www.pli.edu/product/book_detail.asp?id=48856

American Bar Association

http://storefront.bnabooks.com/epages/bnastore.sf/en_US/?ObjectPath=/Shops/bnastore

Wexis• No licensing tab • Strategy: create a custom licensing tab• Results Plus• Total Litigator• TransactionalAdvisor

Legal Resource IndexBroadest Search Tool for Articles

Hey, don’t forget I’m on Lexis, Westlaw and

Web

Don’t Forget Your Old Friend

Don’t forget topics like Antitrust

Don’t forget your old buddy ALR

Non-legal publishers

Boutique publishers…

Professional Societies

Social Networking Web 2.0

Blogs

• Remember – licensing news in IP blogs

Licensing Showcases & Exchanges

Ways to manage flow of news

• Clipping Services• Wexis• Google Alerts

• RSS News Reader• Set up email rules & folders• Mashsup

• News applets• iGoogle• LinkedIn

Consultants

Software

Royalty rates are often required to be reported in SEC filings that can be found in a spectrum of databases from free to premium

Items/analyses that a licensing lawyer may be asked to look into at various levels in the process

General IP Due Diligence for a Licensing Transaction

Lic-ee perspective• Lic-ee perspective (in no particular order)

– D&B on Lic-or (financial soundness);– Litigation records involving Lic-or and/or patent;– Patent search (forward/backward/prosecution history);– Patent family search (assignee);– Patent clearance search (third party patents, freedom to operate);– Patentability search (validity);– State of the art search (alternative/disruptive technologies

available);– Inventor(s) search;– News/business information search on Lic-or; and– SEC search on Lic-or (relevant filings, example licenses).

Wexis have many company research databases…use them now on Pierce unlimited use flat fee price plan

Lic-or perspective– D&B on Lic-ee (financial soundness);– Litigation records involving Lic-ee;– Lic-ee patent search (assignee);– Patent clearance search (third party patents,

freedom to operate);– Patentability search (validity);– State of the art search (alternative/disruptive

technologies available);– News/business information search on Lic-ee; and– SEC search on Lic-ee (relevant filings, example

licenses).

Lots of other stuff• Governing Law Research (what law will govern the licensing agreement)

– In the US– Outside the US, especially if agreement is between multinational parties and

governing law may be in Europe or the Pacific Area• Research areas such as trade secrets protection, contract interpretation, etc. to

decide if a particular governing law is desirable.• Ability to Enforce Covenant Not to Compete

– In the US– Outside the US, especially if agreement is between multinational parties and

governing law may be in Europe or the Pacific Area.• Trademark Research Outside US

– Understanding requirements of licensing agreement in the trademark area in countries outside US (such as Europe, Japan, China and India).

• Registration Requirement of Licensing Agreements– What jurisdictions -- US and International -- that require patent and/or

trademark license agreements to be registered and, if so, relevant costs associated therewith.

This is the end…