Implementing+IP+strategies

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2. Implementing IP strategies

 * Example of a technology (IP) licensing checklist**

The situation: A university proposes to commercialize technology by licensing IP from its existing and projected future research base. From the information provided by the university, it is not clear if (i) the university has a sufficient volume of research which could generate a significant number of patents and licenses; (ii) if the university can realistically expect any significant income from licensing; (iii) whether the university IP policies even permit or encourage licensing; (iv) whether best practices for laboratory record keeping are in place; or (v) whether the staff have sufficient experience to negotiate license agreements. The checklist illustrated below is intended to help answer these and other related questions.
 * **Checklist questions** || **The checklist will provide references in the Handbook to:** ||
 * What is the volume of research? || Guidelines on the expected number of technology disclosures, expected number of patents, expected number of licenses, expected licensing income for a given research volume, all based on the results of licensing income generated by universities and research institutes in a variety of countries. ||
 * What is the nature of the research? || Guidelines on the licensing of different types of research. For example, licensing of software is different from licensing of pharmaceutical research. Also, the volume of research needed to produce a license may differ widely between disciplines. ||
 * Does the research organization have a clear IP policy? || Annotated examples of IP policy and guidelines for policy implementation. ||
 * Does the research organization have systems in place for technology disclosures, keeping laboratory notebooks, and review of IP publication? || Annotated examples, references to best practices. ||
 * What incentives or disincentives are in place? || Examples of incentives to encourage technology disclosures, and for researchers to work within the system. Procedures for distribution of licensing income. ||
 * Does the organization have requirements for exclusive and nonexclusive licensing? || Requirements and incentives. ||
 * Does the organization have experience in negotiating licenses? || Best practices. Annotated samples of license contracts. ||
 * Does the organization have funds for contract preparation, domestic and international patenting? || Cost estimates for patenting and licensing, and potential sources of funds. ||
 * Does the organization have experience in patent searching, competitive positioning, market intelligence? || References to educational materials, market intelligence methods. ||
 * Have alternatives to licensing being considered and evaluated? || Reference to technology commercialization alternatives elsewhere in the manual. Guidelines for decision making. ||

This checklist is not complete, but gives an example of typical questions. The format for each checklist will be developed in the course of preparing the Handbook.