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15 - Doing Innovation Deals

Published online by Cambridge University Press:  05 June 2012

Michael A. Gollin
Affiliation:
Venable LLP, Washington DC
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Summary

This chapter relates to transferring IP rights to implement a management strategy. It begins with the basic elements of making deals relating to intellectual property. It continues with the principles of owning innovations, including how to acquire ownership of IP assets, and what ownership means. The next section describes transferring rights in intellectual property to implement a strategic plan. Assignments, licenses, and other types of transfer are described. Details for transferring each type of IP assets are given – trade secrets, patents, copyright, and trademarks. There are reasons for an owner to license out, but also some disadvantages. The final section outlines the pivotal terms and conditions in IP transfer agreements, both noneconomic (granting clause, exclusivity, field of use, and so on), and economic terms. This chapter concludes with some general advice on how to approach IP deal-making.

In 1995, I traveled to Verata village in Fiji, put on a local sulu sarong skirt, and sat cross-legged on straw mats in an open thatched meeting shelter with community leaders and other outsiders. Our host, Bill Aalbersberg, speaking Fijian, recited the terms of a biodiversity access- and benefit-sharing agreement that had been negotiated during the preceding week. The villagers planned to collect plants and marine invertebrates in collaboration with biologists from the University of the South Pacific, then to provide them to Smith-Kline Beecham for pharmaceutical research, in exchange for payments, training, and a royalty on sales of any resulting products.

Type
Chapter
Information
Driving Innovation
Intellectual Property Strategies for a Dynamic World
, pp. 263 - 286
Publisher: Cambridge University Press
Print publication year: 2008

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