Perspectives on Licensing”How to Engage with Big Business”

P R E S E N T E D B Y

Marty Oehlbeck, Intellectual Portfolio LLC

2020 DHS S&T SBIR WORKSHOP

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Marty Oehlbeck• IP Support Resource for Dawnbreaker for the past

5 years• 35+ Years in Industry – Fortune 300

• IP Portfolio Development and Management• Licensing for Revenue Growth and Acquisition of New

Technology, Partnerships, Etc.• In and Out Licensing Opportunities• Member of LES Standards Team developing IP

Licensing standards

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Approaching Potential Licensees• VC, Angel Investor contacts• Annual Reports, Social Media, Internet• CTO• Technical Champion• Business Development• Website Submissions• LES Licensing Database• Licensee Analysis Services from Dawnbreaker or others

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What to Submit• Non-Confidential Summary of Technology• Advantages• Published IP• Costs where known• Supporting Data• Business-Centric discussion of the opportunity

specifically tailored to that firm

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Big Company Considerations • Business Focused not necessarily Technology Focused• Culture (NIH, risk tolerance, R&D spend as % of sales, etc.)• Time Sensitive• Business Interest in this versus other product investments• Often a make/buy analysis for technology improvements• Numerous priorities, which may shift in the time you are going through this

process• You need to explain how they can make money from your technology

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Technology• Realized product solves unmet need

• When launched!• Advantage vs. future competition

• Product Attributes = Financial Benefit• Innovative leap is desirable• Incremental improvement less so

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Readiness Level and Value

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VALUE

RISK

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Intellectual Property • Patent or Pending– Most desired by licensee. Effectiveness is limited by the will and

resources to enforce it.• Copyright – Very useful for software• CDA/NDA – Very effective. Limited in scope and time. Specific only to agreed parties. • Trade Secret – Can be very effective. No recourse if lost. Risk of 3rd party patenting

your technology• Trademark – Some value if brand recognition exists• Existing Licenses- both “in” and “out” licenses

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Intellectual Property

Patents• Patent protection or well defined/ documented

patenting strategy

• Progress shown against patent strategy

• Full Applications preferred to Provisional Applications

• Global patent rights protected

• See Tutorial https://www.sbir.gov/tutorials/patents/

• You have the primary IP rights not the government

• If patented - Continuation filed

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Collaborative SpiritRecognize Partner’s Expertise

• Marketing

• Sales

• Distribution

• Regulatory Affairs

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• Product Development

• Quality Systems

• Internal RD&E

• Manufacturing Requirements

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Execution• Work within deal structure

• Communication• Progress Rate• Action items• Development milestones• Conflict resolution

• Don’t over-involve

• Be manageable

• Provide support all the way to launch

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Characteristics of Best Small Business Partners• Needed Technology

• Strong IP Position

• Knowledgeable

• Can Articulate Value Proposition

• Collaborative Attitude –Sensitive to Culture

• They Mitigate Risk!!!!

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One Final Thought – Lessons Learned 2019The Legal Landscape is always changing

• Recent court rulings have sided with the actual language in the agreement.

• Assumption is that the parties are “smart” professionals, aware of the details, said what they meant, and intend to adhere to them

• Tightening down on this with less interpretation• Get competent assistance and review of legal

agreements• Understand the details

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