Service: Negotiating technology transfer

Ideal for TTOs who do not have a lot of experience in negotiating licensing deals. We can provide advice and support in negotiating technology transfer agreements, be they in or out licensing, acquisition, or assignment of IPRs.

What

Advice and support in negotiating technology transfer agreements, be they in or out licensing, acquisition, or assignment of IPRs. This would involve advising on realistic values of the IPR to be licensed or sold or licences to be acquired if needed to ensure freedom to operate (FTO) in the context of specific licence conditions and of a strategy in conducting negotiations.

Why

Especially in the case where the research group does not have much experience in the field of IP licensing, they may wish to reach out and seek expert advice. This service is aimed at utilising a team of experts to guide the group through the different and varied aspects of a technology transfer negotiation.

How

Advice and support for technology transfer agreements for beneficiaries may involve any of the phases detailed below.

  1. Initial SWOT: The IPR expert will determine the key drivers for successful negotiation and enable valuation of the PRO IPR relative to the market environment to determine whether it has blockbuster potential or provides a potential improvement over existing products.
  2. Valuations and FTO (Freedom to Operate): The IPR expert will advise on the negotiating strategy including establishing starting parameters and identifying and dealing with FTO challenges.
  3. Exclusivity & Geography: The merits of exclusive vs non-exclusive licensing together with geographic considerations will be explored with and elaborated on by the IPR expert.
  4. Already in use: In this scenario, detailed patent analysis is required to determine evidence of use and claim charting. The PRO will need to give this careful consideration as it may require litigation to secure a license and even the license negotiation can be confrontational.

Deliverable

A written report outlining the strategy for conducting the negotiations that could include (non-exhaustive) valuation, SWOT, FTO, royalty rates, Head of Terms, BATNA (Best Alternative To a Negotiated Agreement).

Outcome

Utilising the expertise of the IP through this service offers the following outcomes:

  • Better deal negotiation potential
  • Facilitated and/or expedited IP licensing negotiation process
  • Increased likelihood of successful IP licensing and technology transfer
  • Clearly identified and defensible evidence of use cases to strengthen IP licensing case

Ideal for

TTOs who do not have a lot of experience in negotiating licensing deals.

More experienced teams who feel that they could secure better deals with some external guidance.