Tech Transfer Central
University-Industry Engagement Advisor

Licensing Know-How: Capture the Full Value of Your Technologies and Foster Supportive Relationships with Licensees

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: May 23, 2019

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University-based start-ups and other licensees often enjoy a close relationship with the faculty inventor of the technology the company or license was based upon. Whether or not a formal consulting agreement is in place, these companies tend to rely on the researcher to provide information as needed to help further the technology. This know-how, along with data and other information, can be crucial to the growth of the company and should be valued as such. While IP licenses address the patent, ownership and practicing rights of an invention, the PI’s “know-how” is usually ignored simply because assigning an actual dollar amount to information inside one’s head is tough to calculate — and can be even harder to negotiate.

But, ignoring it can cost you big money in the long run as a growing number of universities – who routinely incorporate know-how into their licenses – can attest. By aggressively negotiating these know-how rights, TTOs are capturing literally millions of dollars that would otherwise be lost. At the same time, they’re cementing valuable relationships with companies and supporting the progress of their innovations to the marketplace.

That’s why Technology Transfer Tactics’ Distance Learning Division is teaming up with two attorneys who will teach you how to value know-how, how to draft a royalty schedule for know-how, and how your negotiation can maintain the financial integrity of know-how while enjoying a positive, collaborative relationship with the licensee. Please join us for this practical webinar:

Here’s a quick look at what our panel will address in this detailed session:

    1. What is “know-how”?
    2. How to define “know-how”
    3. Who owns know how?
    4. How to value know-how
    5. Audits and how to track use
    6. Trade secrets and confidentiality concerns
    7. Sample agreement clauses
    8. How and whether to enforce rights in know-how
    9. Managing the relationship and other practical concerns

Meet Your Program Leaders:

Wendy ZimboneWendy Zimbone
Founding and Managing Partner
Talem IP Law 

Ms. Zimbone specializes in IP licensing, IP strategy, and contract negotiations.  Her practice is focused on the importance of intellectual property in overall business strategy and technology commercialization.  Her diverse career has spanned engineering, entrepreneurship, technology transfer, management, and law practice.  She joined Talem from the University of Florida where she was the Assistant Director of Engineering and Software Licensing, managing approximately 400 intellectual property cases and an extensive patent budget, and she negotiated dozens of license agreements each year.  She has a degree in Computer Science from the University of Massachusetts and a law degree from University of New Hampshire School of Law.  She was a winner of the Howard Bremer Scholarship in Technology Transfer from the Association of University Technology Managers (AUTM).  She is currently actively involved in AUTM as a member of the AUTM software licensing committee and a regular speaker at AUTM events and webinars. 

Andrew M. HowardAndrew M. Howard
Founder and Managing Member
Andrew M. Howard, PLLC

Mr. Howard practices intellectual property, technology, and complex commercial litigation. He is the founder and managing member of Andrew M. Howard, PLLC, and has represented plaintiffs and defendants in multiple state and federal courts. Mr. Howard was recognized as a top-100 lawyer under the age of 40 in Texas for each of the last three years, and recognized as a Rising Star for his intellectual property litigation practice each of the past six years.

He represented multiple large educational and research institutions enforcing patent portfolios and his clients have operated in a variety of industries, including consumer electronics, medical devices, manufacturing, software development, and natural resource development and collection. Mr. Howard graduated from Washington and Lee University School of Law, magna cum laude, and received an engineering degree from the University of Florida. Prior to founding his firm, Andrew M. Howard was a partner with Shore Chan DePumpo, LLP.

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