[...]... professionals, who have become victims of their own proclivity to migrate clear IP licensing objectives toward complex licensing agreements, will find Essentials of Licensing Intellectual Property to be a timely, snappy refresher If you’re looking for an ivory-tower book that will allow you to impress the executive staff with your expansive but instant knowledge of IP licensing theory and mastery of. .. really “Which of my intellectual properties should I seek to license?” (If you don’t have any intellectual property, you’ve got a bit of a problem.) The starting point, obviously, is a thorough analysis of the intellectual property portfolio, the contents of which can be broadly divided into two categories: property that is in use and property that is not in use It is commonly believed that any property. .. 2 introduces the reader to the basic rules of contract law, including the elements of a contract and the general structure of a license Chapter 3 provides a primer of the various types of intellectual property the subject of any license Licensing strategies are discussed in Chapter 4 The book next addresses the particular issues involved in the licensing of patents, know-how and trade secrets, trademarks,... In the context of intellectual property (IP) licensing, it is a grant, by the owner of the property, to another (the licensee) of this right to use the licensed rights free of suit by the property owner, pursuant to certain terms and conditions and subject to certain limitations The extent of the rights granted in a license may run the gamut from a mere permission to use the licensed property in some... “hidden” intellectual property, to “audit,” “mine,” and “triage” their IP Yet all of this effort, directed to the creation of intellectual property or the identification of existing property, does not in itself yield wealth Intellectual property is not wealth; it is a tool that, properly used, will produce wealth The potential wealth that IP represents is locked away and is unlocked only when the property. .. ownership of the property (an exclusive license) (For more on this topic, see Chapter 2.) 1 ESSENTIALS of Licensing Intellectual Proper ty Interesting Facts • In the United States, royalties from patent licensing have increased from $15 billion in 1990 to more than $110 billion in 2000 • Licensing experts believe that a well-managed IP portfolio should yield 1 percent of a firm’s revenues and 5 percent of. .. many of the trees suffered from lack of cross-pollination due to their isolation and produced less and less fruit Some of the trees expired, either having reached the end of their statutory terms or from other causes, and were not replaced Steadily, the fruit harvest diminished At the same time, unnoticed by the managers, a portion of the fruits, of a variety not used 5 ESSENTIALS of Licensing Intellectual. .. steps necessary to build a profitable IP strategy and deploy smart licensing tactics It’s full of pointed tips and helpful advice that can empower any manager to quickly obtain a solid, hands-on working knowledge of the essentials of IP licensing (Maybe that’s why it’s the title of the book.) xii Foreword Applicable to experienced and new MBAs, read this book and by the end of the day, you’ll understand... retain the right to use the property themselves, either in the present or in the future Moreover, it may be difficult or impossible to find a buyer willing and able to pay the price an IP owner deems appropriate How then is the owner to fully realize the potential value of the property? The answer, of course, is licensing The owner of intellectual property may realize its value by licensing it to one or... thing!) The more licenses that 3 ESSENTIALS of Licensing Intellectual Proper ty are granted, the stronger the licensed patents become (the greater the likelihood the validity of the patent will be upheld at trial) By broadening the availability of a patented technology, licensing may lead to the incorporation of the technology into an industry standard The implications of such incorporation on future . Lerner Essentials of Knowledge Management, Bryan Bergeron Essentials of Licensing Intellectual Property, Alexander I. Poltorak and Paul J. Lerner Essentials of. the potential value of the property? The answer, of course, is licensing. The owner of intellectual property may realize its value by licensing it to one