Negotiating Licensing Agreements

Negotiating Licensing Agreements for Maximum Returns

About the Course:

You do not get the licensing agreement you deserve. You get the licensing agreement you negotiate.

Licensing intellectual property is extremely complex as there are potentially thousands of permutations to licensing agreements. Thus, tens of millions of dollars can be earned or lost at the negotiating table. Senior executives involved with licensing technology must have a firm grasp of cutting-edge negotiating strategies as well as the nuances of negotiating tactics.

This seminar consists of a unique blend of general licensing issues that arise during licensing IP as well as strategies designed specifically for negotiating with Technology Transfer Offices and Patent Assertion Companies. This course is replete with case studies and best practices that will provide you with practical insight for boosting returns on your licensing initiatives.

Specific licensing issues to be addressed include:

o  Royalty rates - minimums, phase-ins, ascending, descending
o  Upfronts and milestones
o  Granting options to take a license
o  Sponsored research
o  Royalty stacking
o  Improvement rights
o  Sublicensing issues (e.g. vetoes, audits)
o  Fields of use
o  Most favored nation licensing
o  Have-made rights
o  Managing litigation
o  Royalty audits
o  Indemnifications 
o  Maximizing duration of license
o  Terminating license

Strategic negotiating issues to be covered include:

o  De-risking investment for licensee
o  Negotiating scorecard
o  Negotiating timeline
o  Technical validation 
o  Role of outside lawyer
o  Non-disclosure agreements
o  Freedom of operations opinion letter
o  Memoranda of understanding

About the Lead Instructor:

David Wanetick, Managing Director, IncreMental Advantage, LLC--a valuation firm with an expertise in valuing intangible assets and emerging technologies--based in Princeton, NJ. Representatives from more than 850 Fortune 1000 companies have participated in programs produced by IncreMental Advantage. David is the author of three books that have achieved world-wide acclaim, including the only two books that unveil Industry Analysis. He has been a guest on CNBC, Bloomberg and CNNfn and has been quoted in the Wall Street Journal, Barrons, Investor’s Business Daily, Boards & Directors, and many other newspapers, blogs and magazines throughout the United States. His articles on Valuing Patents and Early-Stage Technologies and Negotiating Licensing Agreements have been published in Intellectual Asset Management, CEO Magazine, Licensing Journal, Willamette Insights, Valuation Strategies, IP Frontline, Technology Transfer Tactics, Inventor's Digest, The Canadian Institute of Chartered Business Valuators, and others. He speaks about issues of Financial Modeling, Negotiations, Business Valuation and IP Valuation before many organizations and corporations. He has lectured all over the United States, in Canada, the United Kingdom, Belgium, Germany, Singapore, Kuwait, Malaysia, Hong Kong, India and Israel.

*This course is also offered on a custom basis. The content can be customized to meet your company's specific needs and can also be delivered exclusively to your employees at your offices.

Course Length: Approx. 3.5 hours