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A Practical Guide to Licensing Your Technology

A Practical Guide to Licensing Your Technology. David Conrad Director, Office of Technology Development University of Nebraska-Lincoln. Expectations and Cultures.

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A Practical Guide to Licensing Your Technology

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  1. A Practical Guide to Licensing Your Technology David Conrad Director, Office of Technology Development University of Nebraska-Lincoln

  2. Expectations and Cultures Personally, I liked the university. They gave us money and facilities, we didn't have to produce anything! You've never been out of college! You don't know what it's like out there! I've "worked“in the private sector. They expect "results". - Dr. Ray Stantz, Ghostbusters If you take away ideology, you are left with a case-by-case ethics which in practice ends up as me first, me only, and in rampant greed.  - Richard Nelson, U.S. playwright Page 2

  3. What is a University TLO Looking for in a Licensee? A company that will rapidly generate royalty-bearing income or increase the value and liquidity of its equity without imposing undue financial risk or liability on the university And if that doesn’t happen…the ability to get the IP back so that they can give another licensee a shot Page 3

  4. A Step-by-Step Approach to Licensing Explain your technology and your proposed business model Ask for a term sheet template and talk through the definitions Ask for a copy of a business plan that the TLO would deem acceptable Have Lunch with the Licensing Associate Meet with the Director Meet with the Licensing Associate Sign a Standstill Agreement Write your “Business Plan” Discuss the startup process and ask what the University looks for in an "ideal" licensee Ask what the TLO will and won’t be doing during this period Page 4

  5. A Step-by-Step Approach to Licensing (cont.) Talk through your business plan; ask for a copy of the template license agreement Have your attorney review the completed license agreement you plan to submit Remember the “What the TLO is Looking for in a Licensee” slide Meet with the Licensing Associate Have Lunch with the Licensing Associate Meet with the Licensing Associate Meet with Your Attorney Negotiate Present your offer and talk through the agreement while providing justifications for financial terms and milestones Talk through the license agreement and term sheet to make sure both of you are clear Page 5

  6. A Step-by-Step Approach to Licensing (cont.) Have your attorney review the final agreement to mitigate any risks to you or your company Hire excellent people, develop products and services to satisfy real needs, and delight your customers Inspire, encourage and mentor others to become entrepreneurs and give back to society Meet with Your Attorney Sign the License Agreement Create Value in Your Company Pay Your Bills Change the World Ask what the TLO will be doing to assist your company after the agreement is signed Reimburse your patent expenses & make required royalty payments Page 6

  7. Call the Governor, University President, Chancellor, VPR, VCR, Dean or Department Chair in an attempt to get a sweeter deal Have your attorney negotiate the agreement for you Quote the financial terms in license agreements from other universities to justify your position Remind the TLO how much research money you bring in and threaten to move to another university Dream up schemes to avoid paying royalties, milestone payments or patent expenses "Flip" the technology shortly after signing Set up an IP holding company and pursue SBIR/STTR grants only to supplement your basic research funding with no intent to ever make any products or offer any services (the virtual company) What Not to Do—The Seven Deadly Sins Page 7

  8. What Really Matters 1 The history you create during the license negotiations 2 The claims of the patent(s) (protectable and enforceable IP) 3 The uniqueness & sustainability of your business model 4 The quality of your management team & its ability to raise capital 5 The novelty, quality & breadth of your science (platform technology) 6 Your passion, perseverance & willingness to give up control 7 Your timing & luck The critical ingredient is getting off your butt and doing something. It's as simple as that. A lot of people have ideas, but there are few who decide to do something about them now. Not tomorrow. Not next week. But today. The true entrepreneur is a doer, not a dreamer. - Nolan Bushnell, founder of Atari and Chuck E. Cheese's  Page 8

  9. ? Questions? ? ? David Conrad dconrad2@unl.edu 402-570-6980 http://otd.unl.edu Page 9

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