IP Portfolio Management & Strategy Flashcards

What is the key distinction between an exclusive license and an assignment of IP?

Answer: An assignment permanently transfers full ownership, while an exclusive license grants rights while the licensor retains title

In an assignment, legal title to the IP transfers permanently to the assignee; in an exclusive license, the licensor retains ownership but grants the licensee sole rights to use the IP.

Which of the following is a primary advantage of a non-exclusive licensing strategy for an IP owner?

Answer: Maximizing total licensing revenue by licensing the same IP to multiple parties simultaneously

Non-exclusive licensing allows the licensor to collect royalties from multiple licensees concurrently, potentially generating greater aggregate revenue than a single exclusive deal.

What is 'open innovation' in the context of IP management?

Answer: A strategy where companies leverage both internal and external ideas and technologies, and share IP with partners, to accelerate innovation

Open innovation involves purposefully accessing external knowledge and collaborating on IP development, rather than relying solely on internal R&D, to speed commercialization and reduce costs.

In licensing strategy, what is a 'field of use' restriction?

Answer: A limitation that confines the licensee's use of the IP to a specific application, industry, or market segment

Field of use restrictions allow licensors to segment markets by limiting each licensee to a defined application, enabling multiple non-competing licensees in different fields from the same IP.

What is the purpose of a 'most favored licensee' (MFL) clause?

Answer: To ensure that a licensee receives terms at least as favorable as those granted to any other licensee for the same IP

An MFL clause protects the licensee by contractually requiring the licensor to offer equivalent or better terms if it subsequently grants more favorable terms to another licensee for the same IP.

What does a 'reach-through' royalty provision typically require in a licensing agreement?

Answer: Royalties on downstream products or revenues generated through use of the licensed technology, even if those products do not directly incorporate the licensed IP

Reach-through royalties extend the royalty obligation to downstream products or revenues that result from using the licensed technology, even when those products don't directly embody the licensed IP.

Which of the following best describes 'technology transfer' in a university licensing context?

Answer: The process by which universities commercialize research-generated IP by licensing it to companies or forming spin-off ventures

University technology transfer involves moving research innovations from the lab to the marketplace through licensing agreements, sponsored research deals, or the creation of start-up companies.