European IP Helpdesk

Bulletin No. 1 Licensing

1

Contents

Editorial

With knowledge being one of the main driving forces of modern-day economies and “Open Innovation” becoming an increasingly important concept of collaboration, intellectual property (IP) has become a central (business) asset. Different kinds of IP whether trademarks, patents, copyright, know-how or design can be used and exploited in various settings and multiple ways. However, licensing is undoubtedly one of the most common ones when it comes to turning IP into profit and transferring knowledge between different parties be it from a research organisation to a company or from one business entity to another.

The present Bulletin issue sheds light on different aspects of IP licensing and provides professional first-hand insights into real-life licensing practice. We get you started with a brief introduction to key terminology and concepts including an outline from WIPO of six fundamental ideas related to technology licensing. Subsequently, our Senior Policy Advisor Eugene Sweeney takes a look at key (commercial) ingredients in a licence, and tells us a little bit more about the questions and issues to be addressed once the licence deal is done. As Richard Brunner and Sevim Süzeroğlu-Melchiors, both leading IP experts at the Dennemeyer Group, rightly conclude in their piece on licensing out technologies from an SME’s perspective: “A successful licence deal does not end with the parties’ signatures, it is only the beginning.”

In the following, we turn our focus towards some sample cases and best practice examples from the world of technology transfer. We will introduce you to Bastian July, co-founder of the technology recommendation platform GoodIP, who talks current challenges and barriers related to technology brokering and market matching, and gives an overview of intermediaries in the field. Research centres and universities have large pools of novel inventions and IP, but often struggle to find the right licensee. In this regard, the technology transfer office of the German Saarland

University can be seen as a success story that is largely based on an innovative IP commercialisation strategy and rather unusual transfer pathways, as Axel Koch, Managing Director of the Knowledge and Technology Transfer Office, further explains in his article.

While successful knowledge transfer thus already represents a challenge in itself, less performing EU member states face even larger difficulties in establishing appropriate structures to improve the sustainable exploitation of research results. This is where the EU-funded initiative “Alliance4Life” comes into play, seeking to close the performance gap between EU-15 and EU-13 member states in European health research and innovation. In her project portrait, consortium partner Smiljka Vikić-Topić gives some insights into the innovation culture of European transition countries with a particular focus on life sciences. When it comes to licensing in this field, there are some specifics to be kept in mind, as Sebastian Tegethoff from the 24IP Law Group points out.

Taking up the theme of this year’s World IP Day “IP & Sports” this edition is rounded off with an article by Jose Alberto Merida Velazquez showcasing various ways of monetising IP in the realm of sports.

We hope you will enjoy delving into the different facets of IP licensing. Thank you for reading!

The European IP Helpdesk editorial team

Getting Started 2

Introduction to IP licensing

Key Ingredients in a Licence 4

Central terms to be negotiated

in a licence agreement

Licence to Win 6

Licensing out technologies

from an SME’s perspective

Post-deal Management 9

How to make licensing a happy,

long-term relationship

Technology Transfer 11

Brokers, tools and platforms

Matching New Technologies

and Markets 12

Current challenges and barriers

Successful Structures for

Tech Transfer at Universities 13

The case of Saarland University

Licensing in Life Sciences 14

Putting a spotlight on some specifics

Project Portrait: Alliance4Life 15

Closing the health research and

innovation divide in the EU

From Innovation

to Monetisation 17

Intellectual property rights in sports

News from the European IP Helpdesk Team 19

Publications, training and other activities

What Else is There Around? 20

Additional resources and helpful material