The Rubáiyát of Omar Khayyám, LXXI

A good license agreement is essential for laying the ground rules and setting a legal president for a relationship between the owner of a technology and a partner who wishes to use and/or commercialize that technology.   While there are many excellent detailed reviews in this area, this article provides a checklist and short discussion of elements related to marketing, negotiating, preparing and executing a license agreement. It is intended to be a hands-on document to which you can refer in a licensing situation. Although written primarily from the perspective of the licensor, it has equal application to the licensee.

You may also wish to review the following related references:

BioTactics In Action: Vol. 2, Issue 2 - IP Resources on the Net
BioTactics Web: Legal Page

ESTABLISHING A GOOD INTELLECTUAL PROPERTY PROGRAM

Prior to negotiating a license, some consideration should be made to setting up a good program to manage intelletual property within an organization.   The key purpose of an IP program is to maximize the return on your corporate investment in technology. 

A well-established IP program has the following objectives:

• Determine which inventions will be patented or maintained as trade secrets
• Commercialize inventions
• Identify and license technology essential for the business
• Manage ongoing intellectual property issues
• Enhance your organization's reputation as a leader in innovation

Management typically includes handing both in-licensing and out-licensing activities.  At a minimum, some party within your organization needs to be responsible for receiving and evaluating all invention disclosures to determine whether it is in your company's best interest to protect and promote the inventions. Deciding factors include the income generated by the invention, keeping scientific staff productive and satisfied, and the benefits to your company in promoting its technology on a worldwide basis.