‚Äč

IP & TECHNOLOGY COMMERCIALIZATION WORKSHOP

Summary

The Workshop is composed of 4-6 units covering such topics as: IP/IA terms, technology commercialization strategy, best practices to doing a deal, trade secret protection and commercialization, sale of patents, business methods commercialization, and how to craft a "good" license agreement.  Additionally, clients may choose to have one of the units be a mock negotiation.  To ensure that the Workshop is useful and meets client expectations, Value Extraction encourages questions and interactive discussion throughout the session.  Through the Workshop, Henry Fradkin provides anecdotal stories to bring the lessons to "life" based on his on-the-job experience leading Ford Motor Company's technology transfer office, his work to commercialize his own technologies as part of his IP development and holding venture, and his experience with guiding his clients as a consultant.


Who Can Benefit

The participants can be anyone who has a need or desire to learn more about how his/her company or institution can leverage its Intellectual Assets (i.e., IP plus know-how) to generate new revenues and/or improve the bottom line for the organization.  As such, past participants have included technology transfer people, IP and other attorneys, engineering executives, business development people, and purchasing managers.


Past Clients 

Value Extraction has been conducting Workshops since 2003.  Past clients have included Fortune 50 and 500 companies (e.g., GM, AT&T, Microsoft, and Kellogg's), mid-size firms (e.g., Tennant), law firms (e.g., Finnegan Henderson), universities (e.g., University of Illinois and Case Western), and government or quasi-government agencies (e.g., National Technology Transfer Center and the West Virginia High Technology Consortium).


Workshop Content (with approximate time by unit identified in the Italic font)

As noted above, clients may select either a half -day (4 units, 4 hours), 5 unit (5 hours), or 6 unit (6 hours) Workshop by choosing from among the available course units below:

  • Terminology...provides working definitions of IP, IA and Intellectual Capital ("IC") with an emphasis on what they mean for commercialization of technology.  [45-60 Minutes, including Q&A]
  • Technology Commercialization Strategy...covers why an organization licenses out its technologies, why another company would license it in, various ways to commercialize technology beyond licensing, how to find new commercialization opportunities, how to value the deal, and lessons learned as the result of doing deals [60-75 Minutes]
  • Best Practices For Doing The Deal...provides a 12-step process from conception of the deal to administration of the agreement, with clear identification of best practices within each step [45-60 Minutes]
  • Mock Negotiation...enables participants to apply the lessons they learned from the prior two units. [60-90 Minutes]
  • Trade Secret Protection...provides a discourse of what a trade secret is, why it's so important to a company,  ways to protect a trade secret, and key considerations in commercializing one. [30-45 Minutes]
  • Selling IP...covers considerations and tactics in selling patents and other IP [45-60 Minutes]
  • Business Methods Commercialization...covers how to identify business method licensing opportunities, how to protect these business methods, and how to extract value through commercialization.  [45-60 Minutes]
  • Anatomy of a License Agreement...takes a "bad" license agreement and goes through every article in the agreement to change it into a "good" win-win license agreement, starting with the introductory Recitals (i.e., the "WHEREAS" clauses) right down to the Signature section plus necessary exhibits.  [120-150 Minutes]


Cost

Value Extraction charges $4,000 for the half-day Workshop (4 units), $5,000 for the 5-unit one, and $6,000 for the 6-unit course plus reimbursement of any preapproved out-of-pocket expenses, such as travel.

.