Your Licensing Team
The day your technology is accepted by WARF for patenting and licensing, it is assigned to a WARF licensing manager. These technology managers have technical degrees and years of industry experience in sales and contract negotiations. All licensing managers have access to your technology for licensing; however your assigned licensing manager is the one with the most knowledge of your technology and who shepherds it through the licensing process.
Your primary contact on licensing and commercial issues is your licensing manager. But your licensing manager is also part of a larger team that will work together to patent and license your technology.
The entire technology team consists of the following:
- You and your co-inventors
- Your intellectual property manager
- Your primary licensing manager
- Outside patent counsel
- WARF's support staff
- WARF's general counsel and associate general counsel
- WARF's research and marketing specialists
- Other licensing managers
One very important service provided by WARF is license agreement administration. Information on license agreements is entered into WARF's proprietary database system, including license fee and royalty details, payment dates, development plans and report timetables, and licensee and WARF obligations. If any anomalies occur, such as missed royalty payment dates, they are recognized, a report is generated and the assigned licensing manager reviews it. This system and the dedicated people who work with it help to ensure that WARF's licensing efforts are successful.
How You Can Help
WARF fully recognizes the busy schedules that UW-Madison researchers maintain. Once a patent application has been filed and patent office objections are dealt with, WARF can usually proceed with the licensing process with limited time involvement on your part.
Experience has shown, however, that when the inventor is willing to spend a reasonable amount of thought and time in assisting with licensing efforts, the licensing success rate is much higher than when the inventor is not available. Here are some ways you can help:
Educate Your Team
Your licensing manager, intellectual property manager, and patent attorney all have strong technical backgrounds. You are likely to find them "quick studies," but they need you to clearly explain the technical details of your discovery in order to do the best job for you. Remember that your technology, by the very definition of a patent, is novel and non-obvious even to skilled researchers in your field.
List Potential Licensees
As an inventor, you read the technical journals and trade magazines in your field. You also know the industry people who call you and visit your lab, as well as those who are active with competing technologies.
Provide this information to your licensing manager. Often the best potential licensees are those already known to the inventor. Give your licensing manager old copies of the publications you read, materials from meetings you attend, and any other information that relates to the marketing and commercialization of your own or related technologies.
Help to Identify Commercial Advantages
Sometimes there may be other ways to accomplish the same or similar results as with your technology. Tell your licensing manager about these competing technologies as well as the potential commercial advantages of your invention. If you inform the WARF team about these issues in advance, the licensing manager will be in a better position to properly represent your technology to potential licensees. Be candid in this process. WARF always wants to present potential licensees with a full and accurate picture of all technologies. Credibility is an essential aspect of licensing, and WARF has been successful with dozens of repeat licensees as a result.
Be Available to Answer Questions
Unexpected questions often arise when your licensing manager is meeting with potential licensees. You are the best and perhaps only source to fully answer these questions. Sometimes these very questions are a source of ideas for future research that may further increase the benefits of your technology.
Be Curious
Your role at many of the research conferences you attend may be primarily research-oriented. However, please take the time to look at any commercial exhibits:
- Is there an exhibitor directory that might be useful to your licensing manager?
- Does it look like any company is already using your technology?
- Are companies using other methods to get a similar result?
- How might your technology help them?
When Licensing Activities Begin
As a general rule, active licensing begins when a patent application has been filed with the U.S. Patent and Trademark Office. Once this has occurred, a company is able to evaluate the worth of WARF's intellectual property protection. By evaluating a company's response, WARF can in turn obtain an idea of the invention's commercial value. During this phase, you may be asked to review the technology with your licensing manager and to provide any post-disclosure developments affecting its value and marketability.
This timetable is subject to change, depending on the circumstances. If you and your licensing manager are able to identify a good licensee, licensing activities may begin earlier. In other cases, the technology may be so advanced that the market has not yet caught up with it. Then, the best strategy may be to wait until a potential licensee is available who can fully understand the commercial value of the invention.
The first step in WARF's marketing approach is to contact qualified existing customers and licensees. We prefer to provide interested companies with a publication by the inventor describing the technology. If this is not available, WARF considers patent applications without claims to be nonconfidential, and we can provide these to companies for review. Other WARF marketing activities are outlined below.
Marketing Activities
Your licensing manager will use one or several methods to license your technology, depending on what is warranted for the particular technology involved. Possible methods include:
Direct Personal Contacts
Before a technology is licensed, your licensing manager will discuss the technology personally with the potential licensee. Frequently, the first meeting will be the result of a telephone contact and visit to the licensee. This helps to clarify interest early in the process and enables the licensing manager to meet many of the individuals who are interested in the technology from various perspectives.
Direct Marketing
WARF's direct mail program is sometimes used to supplement direct contacts. This is particularly the case where there are many smaller potential licensees that can benefit from a processing method or other refinement. Inbound telemarketing with follow-up by your licensing manager is integrated with this program.
WARF Web Site
All of WARF's active technologies are listed on our Web site and can be easily searched by technology field, keyword, inventor name, and more. Our technology listing is also referenced on other sites, including the sites of the Association of University Technology Managers and Wisconsin Manufacturers and Commerce. A growing number of qualified potential licensees are contacting WARF based on information they first obtained from the Web site.
Technical Presentations
Your own presentations and papers at scientific meetings can be important in licensing. Contacts made in connection with such presentations can be a good source of potential licensees. Please remember to send copies of these presentations to WARF along with any commercial contacts made.
Conferences and Trade Shows
WARF participates in a number of conferences and trade shows each year. Attendees at these shows include industry managers and directors of business development as well as representatives from technology transfer offices across the country. WARF's computerized technology database is available at these meetings to run detailed technology searches for potential licensees.
The License Negotiation
During the entire licensing process, it is important to keep your licensing manager aware of your activities with potential licensees. If you receive direct contacts from potential licensees, please inform your licensing manager. Also please make an effort to answer a reasonable number of questions from potential licensees regarding your technology. This often significantly enhances the licensing process. At the same time, refer all commercial and contract matters to the licensing manager.
If the potential licensee becomes too demanding of your time or too probing of your current research activities, please let your licensing manager know so that he or she can give the potential licensee a gentle reminder. Under no circumstance should a potential licensee consider you an unpaid consultant to their organization.
Once the right licensee has been identified and makes a decision to obtain a license, your licensing manager will negotiate the details of an agreement with the interested company. Licensing negotiations deal with commercial matters, and at this point the inventor normally is not involved. WARF treats licensing terms as confidential between the company and WARF, so your licensing manager will not be able to share details of the licensing agreement with you. But your licensing manager can normally answer your general questions concerning the status of the negotiations.
WARF's experience has been that even if we finalize an agreement with a reluctant licensee, problems with payment delays and other matters make the license marginal at best. Sometimes WARF is forced to move on to another potential licensee rather than continue with a difficult candidate.
Reasonable Expectations
In the end, many technologies patented by WARF are never licensed and many of those that are licensed never pay royalties exceeding their patent costs.
Part of this is because WARF accepts 60% of the disclosures it receives for patenting. Many universities can risk patenting only the top 10% of the technologies they receive as disclosures...or not patent any of them unless a licensee can be found to pay the patent costs. With its strong financial status, WARF can choose to absorb patent costs on technologies that are never licensed rather than risk allowing a commercially viable technology to remain unpatented.
Moreover, while some technologies are licensed within a relatively short time, others need more time to let the market catch up with the technology. Sometimes it is the second license negotiation that works for everyone.
This has been a brief overview of the way your WARF technology team works to license and administer your technology. Please remember that you are also an important member of the team. If you have any questions on licensing, give your licensing manager a call.
