Monetizing IP - Presentation: Richard Weiss, NCR Corporation - IP Law Summit

NCR Confidential

Monetizing IP Rich Weiss Chief IP Counsel NCR Corporation IP Law Summit March 22, 2014

Subject to Copyright Protection. All Rights Reserved.

NCR Confidential

Agenda

• IP Monetization (including the Ways)

• IP Value Generation Agreements

• Elements of License Agreements


NCR Confidential

IP Monetization


NCR Confidential

IP Monetization • IP Monetization should focus not simply on money, but all obtainable value

• By its nature, IP provides significant value obtaining opportunities

• Remember that IP is made up of two parts:

(i) Creations of the Mind (“Technology”): ideas, discoveries, creations, inventions, developments, designs, works of authorship (including software), other expressions, and trade secrets

(ii) Intellectual Property Rights (“IPR”): Rights directed to Technology, e.g., patents, copyrights, trademarks, and trade secret rights

• The value of Technology is inherent, and its uses are endless

• The value of IPR lies in the fact that it provides the ability to control use of Technology, including products utilizing it


NCR Confidential

IP Monetization (Cont’d) • The primary ways to leverage IP to obtain value are:

(i) License (ii) Sell

• But the ways you can actually leverage IP for value are numerous, including: • Defense & Protection • Revenue • Business Value

• Creation & Access to Products, Solutions, Technology & Other Assets • Saving & Raising Money • Pull-Through • Business Relationships

• Demonstrate Technology Leadership


NCR Confidential

Protect

(Especially Core)

Products, Solutions &

Technology

Facilitate

Relationships/Deals

With Others (incl.

Joint Development)

Have Others

Develop (Incl. Compatible

& Value Add) Products

& Solutions

Utilize

Technologies/

Products in New &

Different Ways

Avoidance of &

Defense Against

3rd Party IPR

Claims

Obtain Access/

Rights To

3rd Party

Technology/IPR

Save (e.g., Cost

Sharing/Tax Structure)

& Raise Money

Help Drive

Adoption Of & Value

From Standards Based

On Technology

…Value

Product,

Solution & Technology

Pull-Through,

Development

& Demand

Technology/IPR

Sales

Technology/IPR

Revenue Licensing

Leverage

Discontinued

Products, Solution &

Technology

Promote & Support

Technology

Leadership

Defense & Protection

Tech. Leadership

Business Value Revenue

How IP Can Be Leveraged To Obtain. . .

Revenue

Defense & Protection

Business Value (Incl. New Assets & Value)

Leadership

Business Value


NCR Confidential

IP Value Generation Agreements


NCR Confidential

Exemplary IP Value Generation Agreements • IP Sales Agreements – Transfers ownership of Technology and/or IPR

• IP License Agreements – Licenses Technology and/or IPR

• IP Joint Development Agreements – Governs ownership and rights with respect to Technology and IPR


NCR Confidential

IP/Patent Sale Agreement • Focus is on transferring title/ownership of IP/Patents from A to B

• Key Elements/Considerations:

• Assignment

• Technology and/or IPR

• Encumbrances

• Past, Present & Future Rights

• Payment

• Brokers

• Grantback?

• Reps.

• Title/Ownership

• Encumbrances/Limitation On Rights (e.g., validity, licenses, assertions)


NCR Confidential

IP License Agreements • IPR License Agreements

• Patent License Agreements (aka, “Stick Licenses”)

• Simply agreeing not to sue an entity for making, using, offering for sale, selling and/or importing an item or process covered by a patent

• No technology or other tangibles involved

• Patent Cross-License Agreements (aka, “Reciprocal Licenses”)

• Other IPR License Agreements – Inherently involve Technology as well

• Technology License Agreements (aka, “Carrot Licenses”)

• Software License Agreements


NCR Confidential

Elements of License Agreements


NCR Confidential

Key Patent License Agreement Elements • License Grant

• Rights: Make/Have Made; Use; Offer To Sell; Sell; Import

• Licensed Products and/or Activities

• Field of Use / Territory

• Fees: Fee bearing; Fully Paid-Up/Royalty-Free; Other Business Value

• Interest / Late Fees

• Related Terms: Termination; Audit Rights (especially in the case of royalties)

• Term: License and Agreement

• Grantback

• Assignment of License

• Additional Covenant

• Release

• Reps.

• Indemnification


NCR Confidential

Patent License Grant • Sample Patent License Grant: “ABC hereby grants Licensee a

personal, non-exclusive, non-transferable, non-sublicenable, fee bearing license, in and for the Term, under the Licensed Patents, to make (but not have made), use, offer for sale, sell, and import Licensed Products [and/or carry out Licensed Activities] in and for the Licensed Territory in and for the Field of Use.”

• personal

• non-transferable

• perpetual and/or irrevocable

• make / have made

• Term = x years; Until last of the of Licensed Patents expires

• Fee type has an impact


NCR Confidential

Key Patent Cross-License Agreement Elements • Many of the same issues as with any patent license

• Plus:

• Capture Period

• Subsidiary / Affiliates, especially application before & after becoming one, and including divestitures / spin-offs

• Patent rights from acquirers

• Successor Assignability

• Patent rights from acquirers


NCR Confidential

• Sample Technology License Grant: “ABC hereby grants Licensee a personal, non-exclusive, non-transferable, non-sublicenable, fee bearing license, in and for the Term, under the Licensed IPR, to Use the Licensed Technology in the Licensed Territory in and for the Field of Use.”

• Licensed IPR: patents, copyrights, trade secrets, [and/or] etc.

• Patents specific to the Technology and/or its use

• Use: make, use, copy, modify, [and/or] etc.

Technology License Grant


NCR Confidential

• Many of the same issues as with any patent license, but with an additional focus on IPR & Technology

• Define licensed technology, products, and services

• Define IPR and what rights with respect to IPR

• Rights / Ownership of improvements

• Grantback

Key Technology License Elements


NCR Confidential

Careful Drafting Of License Grants Is Key • Sample Grant A: ABC licenses Customer with respect to the

Products, where “Products” are products of the Customer.

• Sample Grant A’: ABC licenses Customer under its intellectual property with respect to the Products, where “Products” are products of the Customer.

• Sample Grant B: ABC licenses customer under its intellectual property to use the Deliverables, where “Deliverables” are the software, products, and services created for or provided to the customer pursuant to this Agreement.


NCR Confidential 18

Summary • IP is more than just IPR, it also includes Technology

• IP Monetization should not simply be about cash; the opportunities to obtain value are endless.

• IP Value Generation Agreement must be very carefully drafted, especially with respect to the grant, IPR, IPR Rights & Technology


NCR Confidential

Q & A

?

? ?

? ?

?

?

?

?

?

? ?

?

?

? ?

? ?

?

?

? ?

?
