E Pluribus Unum - Out of Many, One

If a university can provide enough information about the know-how for a potential licensee to see that it solves a problem, then that licensee is willing to pay for it, Says Nag. The details of semiconductor engraving, for example, would be considered valuable know-how and value, he explains. Nag and several other technology transfer experts discussed the concept of know-how as a licensed asset at the recent AUTM Central Regional meeting. My main focus is on licensing, supply and procurement agreements in the field of information technology, as well as labour law, corporate law and marketing and IPR issues. Some schools write patent licenses that contain partial and parcel know-how with an invention, as if they were the same, Friedman says, but at UT, “we`re looking for ways to combine know-how with other things like patents” and generate additional revenue. To do this, he points out, for exclusive licenses, it is important to have confidentiality mechanisms. The agreement should also carefully clarify whether the taker has an exclusive or non-exclusive right, as well as the geographical area of the licence. A reflection must also be defined. Where the know-how licensing agreement applies within the European Union, competition rules should be taken into account.

See also the chapter on competition law [8.1 Competition Law]. “They can make the source code available to someone, and they basically get a know-how license,” he says. In this case, “whatever product they make with [the code], they owe us royalties.” The concept of know-how is very important for licensing software patents, Friedman adds. Software licensees don`t want abstract inventions – they want things that work. “If you give a licensee the know-how tools to use the invention, then you gave them a “springboard” to get to market earlier with that invention, he says. The know-how can be allowed either exclusively or exclusively, says Nag. The orientation agreements that faculty members have with companies are the most popular way for universities to concede their know-how. These can be seen as know-how agreements, he says, since these faculty members generally provide expertise with respect to the IP university of the licensed company. Often, a know-how licensing agreement is entered into to complete a patent licensing agreement. For example, the use of patented technologies may be based on knowledge and skills that, in themselves, are not patentable, but must be transferred to allow full use of the technology.

A viable solution in such situations may be the use of a know-how licensing agreement. In such cases, it may be worthwhile to enter into a “patent and know-how license” instead of a simple patent license, so that the licensee has access not only to his invention, but also to the relevant technical know-how. This will allow the licensee to take full advantage of the invention and understand it. Enough betrayal on the know-how to sell it, but not enough to “let the cat out of the bag” can be difficult, warns Nag. “You have to show the other entity that you have something valuable, but you can`t reveal everything — it becomes a step in the management of negotiations.


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