Summary and Learning Objectives/Outcomes    

This special topic will center on licensing of IP. IP can be licensed to another party (out-licensing) or your company may obtain rights to third party IP (in-licensing). Licensing can be driven by different needs of your business such as commercialization of your IP for revenue and growth, acquisition of assets for a start-up company or managing legal risks around your product or service entering the marketplace. These situations are covered in more detail in this module and after completing this section you should be able to:  

Assigned Material  

Out-Licensing IP and Enforcing IP Rights 

Licensing is a common mechanism for extracting value from your IP and described in the material below.  Commercializing your IP can be passive whereby third parties approach your company to license your IP and/or it may also require an active or offensive approach requiring legal action or other means such as licensing or partnering.

In-Licensing IP  for Acquiring Assets and Freedom-to-Operate

Many academic start-up companies are created around in-licensing of university-owned IP.  These licenses typically represent the company's first and only assets.  In-licensing of IP may also be needed by a company if third party IP is identified that is required to commercialize their proposed product or service. Identifying third party IP in a freedom-to-operate analysis can be important for the development and marketing of your product or service and your business model.    

Anatomy of a License and Related Agreements

In the topics above, we discussed different reasons why a business will out-license or in-license IP. In all of these cases negotiation of a license agreement is required.  Legal representation will be important for negotiations but there are specific terms in the license agreements that a business needs to consider when negotiating. Provided below are templates for licensing agreements and term sheets that highlight some of the more important terms to consider.

License/Option Agreement

Term Sheet

Graded Quiz

IP Licensing Quiz