ASTP training course technology licensing: good practice & strategies 25, 26 & 27 January 2012 Faculty Club – Leuven, Belgium
course team: Henric Rhedin (course director), Chalmers Industrial Technologies, Sweden; Dominic De Groote, Ghent University, Belgium & Anette Poulsen Miltoft, Technology Transfer Office of Aarhus University, Denmark
Wednesday 25 January
Thursday 26 January
09.00 - 09.15 Welcome: by course director Henric Rhedin, Division Manager, Commercial Research & Development, Chalmers Industrial Technologies, Sweden
08.30 - 09.45
09.15 - 10.15
What industry wants from Universities
There is no such thing as buying a technology from the shelf from universities. Understanding industries take on risk and value assessment when it comes to in-licensing of third-party technologies, is step one to success. Gibert van den Broek, Senior Licensing Manager, DSM Innovation Center, DSM, the Netherlands Andrew Tingey, Senior Licensing Manager, DSM Innovation Center, DSM, the Netherlands
Deal strategy – the essence of a wise deal
A wise deal is one that provides the right incentives to both parties and a fair return to each, prevents opportunistic behaviour by each, and future-proof. There is no way of guaranteeing a wise deal – but there are ways in which you can almost guarantee that a deal will go sour and need to be re-negotiated. An experienced professional helps us how to avoid 'foolish' deals and handle situations where despite everything, the agreement has to be „re-visited‟. Penny Attridge, Senior Investment Director, Spark Impact Ltd, United Kingdom
Financial terms
Friday 27 January 08.45 - 10.15
Post-signature license management
We have all read the reporting/audit clauses in license agreements. But what should a royalty report state? When to think about an audit ? How to prepare for an audit? What does it cost? How will your licensee react? Jacqueline Gram, Director, Dispute Analysis & Investigations, PricewaterhouseCoopers, Belgium
09.45 - 10.45
The one-million euro question: what royalty should I ask? How do I calculate a milestone payment? Are there other financial mechanisms or value I can use/trade? In this session, we will explore different financial strategies to get to the much endeavoured win-win deal structure. Mark Anderson, Managing Partner, Anderson Law LLP, United Kingdom 10.15 – 10.45 COFFEE BREAK
10.45 – 11.00 COFFEE BREAK
10.45 - 11.45
11.00 - 12.45
Case study – Life cycle of a license deal: part A
Until you have concluded a few license agreements it is difficult to envisage what the process „looks like‟ or to be able to anticipate the kinds of things that can go wrong or that you might later regret. In this session we describe a particularly „rich‟ licensing case study which ended happily but only after the TTO had to manoeuvred around multiple obstacles and issues. Wim De Clercq, IP Officer, K.U. Leuven Research & Development, Belgium Jeff Skinner, Executive Director, Deloitte Institute of Innovation and Entrepreneurship, London Business School, United Kingdom 11.45 - 12.30
Developing a licensing strategy
What do we mean by the term, „licensing strategy‟ and to what extent is it necessary to develop such a strategy in advance? In this session we put you in the position of a TTO who has to formulate a strategy for a new technology. Both the technology & academics are real. Your job is to
Case study – Structuring the license deal
As soon as we start talking to a potential licensee we begin to make „commitments‟ and build expectations. This is perfectly natural – we want to be reasonable and appear commercial – as well as making progress and setting out the main terms of the deal so that we can instruct lawyers effectively. However, some of the „terms‟ we „agree‟ in this honeymoon period turn out to be fiendishly difficult or even impossible to convert into „legalese‟. In this session we look at some seemingly harmless commercial terms and attempt to convert them into fullycontingent legal terms. Jeff Skinner Mark Anderson
10.15 – 10.45 COFFEE BREAK 10.45 - 13.15
Team case study: Presentation & feedback by expert panel
Each team is given the floor to pitch their case and to highlight essential issues, problems and solutions for their case. Expert panel
think through what constitutes a strategy, and what you would advise (the academics & the university) in this case. We then use his exercise to examine what it‟s useful to think & discuss up front. Jeff Skinner 12.30 – 13.30 LUNCH 13.30 - 14.30
Case study – Life cycle of a license deal: part B Feedback & case wrap-up Jeff Skinner Wim De Clercq
14.30 - 15.30
Market research: find your partner
How to find your licensees; what are their goals (is it useful to address this or that company, because they are in financial trouble, not focused in the type of IP you are commercializing?); What is the potential value of your IP? Do you compare with other similar technologies? If no benchmark is available, how do you do it? Cath Whitaker, Director, Team Services Ltd, United Kingdom 15.30 – 16.00 COFFEE BREAK
Warming up licensees
16.00 - 17:45
The hardest part of a TTO‟s job is finding and enthusing potential licensees. This is an immense hill to climb – especially if we‟re approaching cold. The key is to get that first meeting – and to „know‟ why the company should want your technology. The next step is somehow to generate genuine interest in the technology – enough that they are hungry to know more. In this session we learn and practice some powerful sales techniques that you can use to „warm up‟ potential licensees Role play: SPIN-selling technique Jeff Skinner 17.45 - 18.30
Team case study: Break-out session I
Each participant brings along her or his own license case (pre- or post deal). The group breaks out in small teams and discuss the individual cases and select one case they will have to present on day 3 of the course. Henric Rhedin Dominic De Groote, Business Developer, Ghent University, Belgium Anette Poulsen Miltoft, Senior Legal Adviser, Technology Transfer Office of Aarhus University, Denmark 19.00 SOCIAL PROGRAM (dinner)
12.45 – 13.30 LUNCH
13.15 – 14.15 SANDWICH LUNCH
13.30 - 15.00
How robust is the deal?
The ink is dry and we think we‟ve cut a great deal – a lucrative mix of loyalty, milestones and (sometimes) equity now relax and wait for the cash to pour in. Well, if you‟re lucky, but it‟s likely that commercialisation takes an unexpected path and you find that one or more of those revenue streams is threatened or re-negotiated. In this session we study the case of a licensee seeking to „discuss‟ the terms of the original license and, with the help of an expert panel, discuss what our response should be. Expert panel
15.00 – 15.15 COFFEE BREAK 15.15 - 16.30
Dirty little tricks in licensing
Learn some “classics” when it comes to influencing the license negotiation process. “This is company policy”, “You‟re the only university that does this”, ring a bell ? In this session, you definitely come across some situations which you will recognize or have to recognize in future negotiations.
Really crummy deals
Bad deals, you‟re not alone … Learn from some case studies what to avoid in future license deals. Jeff Skinner 16.30 - 18.00
Team case study: Break-out session II
Preparation of selected case study: describe the case + how to bring it forward; to be presented tomorrow Henric Rhedin Dominic De Groote Anette Poulsen Miltoft
COURSE ENDS