IP Matters in Every Deal
IP Matters in Every Deal
I attended the 2013 Annual Meeting of the Licensing Executive Society (LES), held in Philadelphia from September 22-25. As I’ve mentioned in an earlier blog post, LES is an international association of members with an interest in the transfer of technology, or licensing of intellectual property (IP) rights - from technical know-how and patented inventions to software, copyrights and trademarks. The theme of this year’s meeting was “IP Matters in Every Deal”, and conference sessions were quite varied, including discussions on patent trolls, the recent Association for Molecular Pathology v. Myriad Genetics Supreme Court decision, IP in sponsored and collaborative research, and the role of brand and trademarks in licensing deals.
I found one session to be particularly interesting: The Role of IP in Multi-Disciplinary Deals. Moderated by the Licensing Director of GE Healthcare, panelists presented on how they identify and address multiple forms of IP in their deals. One panelist discussed in-licensing deals that integrate instrumentation, biologicals, or software with trademarks (brands), and occasionally know-how. A second panelist came from an interesting industry sector: cinema advertising. Their output is generally the in-lobby promotions and on-screen ads that you see in the theater while waiting for your movie to begin. His presentation emphasized that there needs to be a critical dose of common sense present in order to actually get deals done. The third panelist was an attorney who discussed how to structure various IP components in an agreement.
Collectively, the presentation was excellent in identifying key issues that transcend industry sectors. And at the heart of the session, I think we could all agree on two key points when thinking about an IP-based transaction:
1. You must identify and understand all of the individual IP components involved; and,
2. You must understand what each party needs out of the deal with respect to these IP components
Our office (now UNH Innovation, formerly ORPC) encounters multiple IP elements on a regular basis as we work with the innovations developed at UNH. We are finding more examples of exciting intellectual property that integrate multiple IP components, such as copyrights and trademarks, research tools and trademarks, patentable inventions with copyrights, etc. One example is the UNHCEMS® software, a web-deployed chemical inventory management system that we license to other institutions. The software is protected by copyrights, while the brand is protected by a registered trademark (UNHCEMS®). As you can easily imagine, it would be a significant loss to UNH to have another party (academic or commercial) market a competing chemical inventory management tool as UNHCEMS®. Thus, it was critical that we identified both of these IP elements and bundled them together in an easy-to-license package.
I do think that IP matters in every deal, including the “deal” of how we think about the innovations we create. Regardless of whether protectable by copyrights, trademarks, trade secrets or patents, IP is intangible products of a creative effort. An innovation is the creative embodiment of an innovator’s significant know-how, which is valuable. When it is appropriate to represent that value in a licensing transaction or by a monetary sum (the “deal”) should be the subject of another discussion. Important to this discussion, though, is that the value should always be recognized and acknowledged by both the innovator and those who can benefit from the innovation. IP matters in every deal.
For additional discussion about IP and your innovations, please contact any of the licensing managers at UNH Innovation, including myself (firstname.lastname@example.org).
Photo Credit: Thesab
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