what other tips can you offer for us to become effective license
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10 Tips for Licensing Intellectual PropertyHow can you make sure you're getting your innovations into new places while still getting a good deal for all your hard work? Follow tips from the pros.
BY TIM DONNELLY, INC.COM CONTRIBUTOR
@TIMDONNELLY
Congratulations: you have an innovative product or service. So you naturally want as many people to be using it as possible. When a company turns to licensing its intellectual property, it opens up a whole new world of customers, giving it money to fuel future inventions. But how can you make sure you're getting your innovations into new places while still getting a good deal for all your hard work? We've talked with the experts in the field, asking for their best tips you should consider before you start.
1. Keep good records.
"Get in the habit of establishing and maintaining complete centralized agreement files. You get at least two significant advantages by doing this. First, if a license dispute erupts, the party with better agreement files has a significant early advantage. Secondly, if you ever want to sell your business, accurate and complete agreement files makes it easier for a potential buyer to conduct its due diligence while also enhancing how the potential buyer views your business. Quite simply, accurate and complete agreement files make your business more valuable."
-David Kagan, adjunct professor of intellectual property Licensing at William Mitchell School of Law
2. Be diligent about enforcement from the start.
"A lot of inventors are under the misperception that they get a patent and the money rolls in. They don't realize there's a lot of work that goes into enforcing a patent. Once you get the patent, you have to pay attention to who may actually be using your invention. Parties who infringe your patents don't have to do it on purpose to be infringing. There's no intent requirement for patent infringement. It's unusual for a party to just come to you and say, 'We're using your patent and we want to get a license.' Look for the presence of your invention in other people's products or services. Managing that portfolio in an effective way becomes a bit of a logistical challenge. One has to be aware of inventions perhaps in many different fields and stay abreast of where they're being used."
-Manny Schecter, chief patent counsel for IBM
3. Keep long-term relationships in mind.
"You need to start to understand what are the negotiable points and what are the 'don't even try because it's our policy (points)'. You can waste a whole lot of time and a whole lot of good will. License agreements aren't like selling a used car. You don't get the best deal you possibly can and run. You're going to be living together for a long time. Circumstances change, you need modifications, you don't know what your company's going to look like in five years. You've got to leave good will and understanding on both sides because you're going to be living with each other. You're really to some extent partners: (the company) wants stuff to get developed, (the licensee) wants you to be successful but at the same time they want a fair deal. It's a different style of negotiation."
-Lita Nelsen, director of the Technology Licensing Office at the Massachusetts Institute of Technology