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Patent Licensing: A Checklist

By Devan V. Padmanabhan and Sean D. Solberg
August 31, 2004

Intellectual property portfolio management is an essential part of any tech company's business strategy. Part of the management strategy must include implementation of an appropriate patent licensing program. An effective licensing program can be the difference between a patent portfolio that churns out profits for your company and one that becomes a profits sinkhole.

The following is a basic checklist summary of various factors that must be considered in determining how to structure your patent licensing program. Considerations that will be addressed include 1) the overall business strategy and how that impacts your company's decisions to license or assign its technologies, 2) factors surrounding assigning vs. licensing your patents, 3) factors surrounding licensing your patents exclusively vs. non-exclusively, 4) dealing with “know-how,” 5) fee structures for your licenses, and 6) factors relating to foreign licensing.

Overall Business Strategy

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