Organized by The World Intellectual Property Organization (WIPO)

in cooperation with

The National Institute of Intellectual Property of Chile (INAPI) Santiago de Chile, October 21 to 24, 2013

Intellectual Property Management in Universities and Successful Technology Licensing

Successful Technology LicensingChapter III: Key Terms

Cluster 4: Technology Growth and Development

Improvements by Licensor and Licensee Developments made by any or the parties that the

date of the license, that bring new features to licensed products, process or services. Sometimes improvements are know-how, they may also become patents.

Joint Improvements New products New patents Service and support TECHNOLOGY IS ALWAYS CHANGING! BUT

CONTRACTS are fixed in time.

Future Developments

The Problem: Licensor will often make future versions, new products, new patents. Licensee wants to be able to have these; Licensor does not want to be bound to

grant these; Rights of first refusal -- can be illusory and

waiting periods may hold up other alternative business;

Licensee will generally want access to the latest, but freedom to stay with the old;

Avoid giving license to future patents.

Future Developments by Licensor

Avoid any commitments that limit options to develop new products;

Options to acquire new IP are popular - but on what terms? The terms for a right of first refusal have to be spelled out.

Usual requirements or features about improvements :

• Difficult to keep other party informed. Mutual obligations to inform the other Party to be accepted after careful consideration.

• Be careful as to grant back provisions.• Right to research should be included to allow for

improvements.• Access to future developments can be negotiated.

Future Developments by Licensee

Grant backs: when licensee must give back to licensor a licensee to improvements to the licensed technology. Can be mutual.

Platform strategy often involves

grant backs: e.g. Linux /Open Source.

Future Developments: Grant Backs by Licensee

Teaching and training? Consulting, know how? Corrections to defects, design flaws? Maintenance, telephone support?

(sometimes a separate contract) Spare parts?

Service and Support: Who will Perform, Who will Pay

for:

Financial Terms are always related to Clusters 1, 2 and 4.

Look at total value of all aspects of the deal, including new products, new versions, new patents are included.

Use flexibility in deciding how to pay. Give both sides financial incentives to

continue to work together.

Clusters 3 and 4: Conclusion