A Practical Guide to Licensing Your Technology David Conrad Director, Office of Technology Development University of Nebraska-Lincoln
A Practical Guide to Licensing Your Technology
Feb 25, 2016
A Practical Guide to Licensing Your Technology. David Conrad Director, Office of Technology Development University of Nebraska-Lincoln. Expectations and Cultures. - PowerPoint PPT Presentation
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A Practical Guide to Licensing Your TechnologyDavid ConradDirector, Office of Technology DevelopmentUniversity of Nebraska-Lincoln
Page 2
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
Expectations and Cultures
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
What is a University TLO Looking for in a Licensee?
Page 3
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 4
A Step-by-Step Approach to Licensing
Have Lunch with the Licensing
Associate
Explain your technology and your proposed business model
Meet with the
Licensing Associate
Ask for a term sheet template and talk through the definitions
Write your “Business
Plan”
Ask for a copy of a business plan that the
TLO would deem acceptable
Meet with the
Director
Discuss the startup process and ask what the University looks for in an "ideal" licensee
Sign a Standstill
Agreement
Ask what the TLO will and won’t be doing during this period
Page 5
Have Lunch with the Licensing
Associate
Talk through your business plan; ask for a copy of the template license agreement
Meet with Your
Attorney
Have your attorney review the completed license agreement you plan to submit
Negotiate
Remember the “What the TLO is Looking for
in a Licensee” slide
Meet with the
Licensing Associate
Talk through the license agreement and term sheet to make sure both of you are clear
Meet with the
Licensing Associate
Present your offer and talk through the agreement while providing justifications for financial terms and milestones
A Step-by-Step Approach to Licensing (cont.)
Page 6
Meet with Your Attorney
Have your attorney review the final agreement to mitigate any risks to you or your company
Create Value in
Your Company
Hire excellent people, develop products and services to satisfy real needs, and delight your customers
Change the World
Inspire, encourage and mentor others to
become entrepreneurs and give back to
society
Sign the License
Agreement
Ask what the TLO will be doing to assist your company after the agreement is signed
Pay Your Bills
Reimburse your patent expenses & make required royalty payments
A Step-by-Step Approach to Licensing (cont.)
Page 7
What Not to Do—The Seven Deadly Sins
1. Call the Governor, University President, Chancellor, VPR, VCR, Dean or Department Chair in an attempt to get a sweeter deal
2. Have your attorney negotiate the agreement for you
3. Quote the financial terms in license agreements from other universities to justify your position
4. Remind the TLO how much research money you bring in and threaten to move to another university
5. Dream up schemes to avoid paying royalties, milestone payments or patent expenses
6. "Flip" the technology shortly after signing
7. 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)
Page 8
What Really Matters
The history you create during the license negotiations1The claims of the patent(s) (protectable and enforceable IP)2The uniqueness & sustainability of your business model3The quality of your management team & its ability to raise capital4The novelty, quality & breadth of your science (platform technology)5Your passion, perseverance & willingness to give up control6Your timing & luck7
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
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