Welcome and Introduction:
Market Timing and Licensing
Options
Varda N. Main
Director, Technology Licensing Office

Intellectual Property Rights
 Trade Secret
– Know-how
– Show-how
 Patents
 Trademarks
 Copyright
 Mask Works
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Technology Transfer
 Collaborative process whereby the products of
R&D flow from a source to the (next) user
 Numerous transfer options including:
– Licensing
• To an established company
• To a start-up company
– Alliances
– Use of facilities
– Consulting
– Outright sale
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Packaging of Technology for
Transfer
 Licensing needs to be win-win situation
 What must the licensor do to ensure that the licensee will be able to fully use the licensed technology?
 How to identify all the know-how, show-how and technology needed by the licensee?
 What other information may be needed in negotiating a technology transfer?
– tax credits
– financing
– marketing
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Determining Position in the
Technology Life Cycle
 Technical performance obsolescence
 Technical feature obsolescence
 Cost obsolescence
 Safety obsolescence
 Shifts in consumer preferences
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What do you really have?
Know the History
 Base patents and continuations
 Technically related patents and copyrights
 Software versions
 Previous agreements
 Outside authors and inventors
 Funding sources
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The View on the Other Side of the Table
 Perception of business risk.
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Who’s bringing what to the table?
 What are the 3 points of difference for the technology/opportunity?
 What would make a user switch to this product/process/service?
 What is needed to bring this to the commercial marketplace?
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Importance of Timing
 Commercialization and patent prosecution timelines must coincide “Window of Opportunity”
 Understand the technology & IP life cycles
 Understand the impact of competing technologies
(i.e., first to market)
 Durability of competitive advantage
 Fit with business or corporate strategy
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Value of The Portfolio
 Value in the eye of the beholder
 A portfolio is more than the sum of its parts
 Value depends on how the portfolio is protected and the strategy to sell it.
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Portfolio Valuation
 What is the competition? Is your portfolio unique?
 Who is willing to buy?
 Different Parties = Different values
 How critical is technology/portfolio to the outside?
 What are they willing to pay?
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Pricing Technologies
 Market value of technology
 Uniqueness of technology
 Competitive position
 Type of protection for the technology
 Stage of technology development
 Improvement provisions of license
 Exclusivity
 Field of use
– geographical
– market sector
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Rights under a License
 To make
 To use
 To disclose to others
– by publication
– in a marketed product
– in a service manual
– as a sub-license to a third party
– to lease
 To sell
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Types of Licenses
 Exclusive - there can only be one licensee; the licensor has no rights to exploit the technology/product
 Sole - exclusive but for the licensor; i.e., the licensor has rights to exploit the technology/product
 Non-exclusive - there is no limit to the number of potential licensees
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Types of Licenses
 Irrevocable/Revocable for cause
 Territory: World-wide/Limited to named geographic regions
 Field of use: Market-specific
 Royalty-bearing/Royalty-free
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REMEMBER…
 The technology goes through the entire innovation/commercialization process (from concept to end user); people typically don’t go through the entire process
– Know your strengths and weaknesses
– Know when to say no
– Know when to exit
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Services provided by TLO
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Determining IP ownership issues
Marketability assessment of inventions
Patenting of inventions
Registering copyright
Registering trademarks
Valuing commercial worth of technologies
Developing commercialization strategies for technologies
Marketing technologies available for license
Conducting license negotiations
Administering licenses
Chairing the Technical Review Panel and Intellectual Property
Policy Committee
Outreach and training
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Your role and responsibilities as a RIT inventor or author
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To conduct thorough searches (and periodically update these searches) of the published literature and patents to determine if your creation is novel
To promptly and completely disclose your creations to RIT
To assist RIT in seeking IP protection on selected technologies
To assist RIT in seeking licensees for selected technologies
To enjoy the 50% inventors’ share of licensing revenues!
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TLO website – www.rit.edu/tlo
 General information on intellectual property and licensing
 RIT Invention Disclosure Form
 RIT policies relating to IP and licensing
 Sample agreements and standard IP terms
 Technologies available for license
 Links to many other related resources
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For more information…….
Technology Licensing Office
Varda N. Main, Director
4018 Eastman Building (Bldg. 1)
(585) 475-2986 vmain@mail.rit.edu
www.rit.edu/tlo
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