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Managing Intellectual Property Assets in International Business, particularly in relation to Technology Transfer Ron Ma

Implementation of the National Intellectual Property Strategy and Intellectual Property Rights Protection for Small and Medium Enterprises (SMEs); Bishkek, November 2013. Managing Intellectual Property Assets in International Business, particularly in relation to Technology Transfer

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Managing Intellectual Property Assets in International Business, particularly in relation to Technology Transfer Ron Ma

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  1. Implementation of the National Intellectual Property Strategy and Intellectual Property Rights Protection for Small and Medium Enterprises (SMEs); Bishkek, November 2013 Managing Intellectual Property Assets in International Business, particularly in relation to Technology Transfer Ron Marchant CB FRSA

  2. Outline • Entering the International Market • Looking to Export • Looking to Import Technology • Licenses • Negotiating Licenses • Precautionary Steps • Important Points to Remember • References

  3. Entering the International Market • Domestic Market presence? • Knowledge of international target market(s) • Knowledge of international potential partners • Intellectual Property aspects • Scope of effective protection • IP portfolio • Regulatory and Enforcement Regimes

  4. Looking to Export – 1 • Making an informed decision • Identify markets and demand • Identify partners for distribution and retail • Understand target market • Regulatory regime • Consumer tastes • Develop Export Plan • Clear contracts and agreements with partners • Transport and shipping arrangements • Modification of product and presentation if necessary • IP protection

  5. Looking to Export – 2; IP Issues • IP will affect the potential market price • Trademarks valued by consumers • Effective protection reduces competition • Any modifications should be protected specifically to the market • IP will give investors confidence • IP will clarify ownership issues • The IP of others limits freedom of action • IP provides firm base for marketing campaigns

  6. Looking to Import Technology • Two aspects • From domestic sources • From international sources • Either can form basis of both domestic market supply and exporting • Find relevant technology to business objectives • Determine and define ownership issues • Build ongoing relationships and partnerships

  7. Licenses • What is a license? • Permission to something that is otherwise an infringement • Coverage of licence • All the IP related to a product/process • The product itself • The technology incorporated in a product • Types of Licence • Exclusive; only the licensee, not the licensor, can use the IP • Sole; only the IP owner and the licensee can use the IP • Non-exclusive; the IP owner and more than one licensee can use the IP

  8. Negotiating Licenses - 1 • Whether licensing-in or licensing-out establish fallback position • Seek confidentiality agreement • Be clear about what is being licensed • Patented technology • Know how • IP in future developments • Back-IP • What is licensee entitled to do • Type of licence • Financial terms • Net sales • Profits • Payment of royalties schedule • Duration of licence

  9. Negotiating Licenses – 2 • Prepare yourself • Realise other side is at least as prepared as you • Try and envisage and understand the other side’s objectives • Bear your interests in mind rather than taking positions • Be prepared to compromise • Understand the IP position and strength • Aim for a “win-win” • Establish best and worst position • Be credible • Remember that you may not reach agreement

  10. Precautionary Steps • “due diligence” • Check your IP • Check partner’s IP • Check ability of partner to fulfil agreement • Establish security of negotiations – confidentiality • Understand regulatory regimes where markets are being sought • Keep agreement clear and simple – no ambiguity • Both parties must have same interpretation/understanding of agreement

  11. Important Points to Remember • Do your homework about markets • Be sure about what you want • Undertake due diligence • Negotiation is a skill • It is easy to do badly • Consequences can be longlasting

  12. References • Successful Technology Licensing http://www.wipo.int/export/sites/www/freepublications/en/licensing/903/wipo_pub_903.pdf • Exchanging value http://www.wipo.int/export/sites/www/freepublications/en/licensing/906/wipo_pub_906.pdf • Secrets of IP: A Guide for SME Exportershttp://www.wipo.int/export/sites/www/freepublications/en/intproperty/itc_p163/wipo_pub_itc_p163.pdf

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