The Best Defense is a Good Offense: Maximizing Potential Exits Through IP Landscape Analysis

The biocommercialization process should anticipte drafting and negotiating complex license agreements. Examples of licensing and technology transfer agreements include:

• Strategic alliance agreements • Manufacturing agreements • Sponsored research agreements • Supply agreements • Employment agreements • Distribution agreements • Compensation agreements • Material transfer agreements • Confidentiality agreements • Joint commercialization agreements

I have assisted clients in developing comprehensive licensing strategies that target competitive industries and seek to optimize royalties and license fees for my clients. Such strategies identify potential secondary uses, efficiencies, and obstacles to the downstream use of the intellectual property and technology. Therefore, an important part of developing a comprehensive licensing strategy is integrating freedom-to-operate and competitive intelligence information into the evaluation, structuring, drafting, and negotiation of the license. By developing such a strategy, my clients have discovered whether their technology is the "missing piece" of a competitors' patent portfolio, or the technology is a vast improvement in the market. This information can be leveraged in an intellectual property strategy that protects these important elements of the underlying technology to enhance the potential for optimized royalties and license fees.

Regardless of the context of the license negotiations -- whether adversarial patent license negotiations to avoid litigation or friendly business transactions -- experienced counsel is recommended to partner with you in your licensing transactions.

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