• Why you need to learn the language of licensing. Everything discussed with a licensing interest will have an impact on the negotiations. "Inventors might not realize it, but they become engaged in negotiations from the very first contact with a potential licensee," says we. "Thinking they are just marketing the license, they might say something like I've been offered a million dollars for my company' only to find that a million dollars has suddenly become a stake in the ground as far as the licensing terms. They need to be aware of what they are saying as everything becomes part of the negotiation."
• How to get ready to deal. Preparing for negotiations involves everything from researching background information on bordering technologies and developing a good qualified leads list to creating marketing materials such as a flyer and a bill of materials before you make the first call. "I guarantee that a prospect will ask to see something in print. If you have to go back and spend three months putting that material together, you risk losing the licensing interest,".
• How to market your intellectual property. License marketing is more than patents. Among the steps covered, we will teach participants the mechanisms for building value in their intellectual property.
• How to negotiate a license. Not everyone has the skill set required for being a good license negotiator. Small businesses, in particular, need to ensure that they have the right people at the table during this key part of the licensing process. we will discuss the characteristics of a good negotiator and how to help your team be properly prepared. "Too many small businesses take the wrong people to the table," she says.
• How to manage your license. The licensing process doesn't end when the papers are signed. Somebody needs to monitor the licensing activity to ensure that the terms of the agreement are met. What if reporting milestones are overlooked, or payments are missed? Should termination rights be invoked? we will discuss these points and more.

"The biggest problem I see when I'm called in to help licensing negotiations that are floundering is a lack of sufficient detail. Licensing agreements need to be developed with enough detail that both parties properly protect their intentions expressed during negotiations, and with as much foresight into the future that can be mustered.

Protecting Your Intellectual Property

Does your business need to create a strategy for managing and protecting your intellectual property (IP)? One important step is working with the U.S. Patent and Trademark Office to file and put on protect your patents and trademarks. Your IP strategy might also involve taking steps to secure your copyrights as represented in web material, publications and software. If your company holds trade secrets, you will need to consider how those can be preserved through company procedures and employee agreements. In all matters, it is essential that you preserve the confidentiality of your idea while working with third party interests.

The following are links to examples of non-disclosure forms and language that can help you customize a confidentiality document to protect the confidentiality of your innovations.

Disclaimer: Although this web site may provide information concerning potential legal issues, it is not a substitute for legal advice from qualified counsel. You should not and are not authorized to rely on this web site as a source of legal advice. Your use of this site does not create any attorney-client relationship between you and the State of Montana. The material provided in this web site is provided merely as a public service.

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Resources for Inventors

As an individual in the early-idea stages, are you experiencing excitement and frustration right now? Do you see rewards and the potential of your idea while simultaneously being plagued by a multitude of confusing questions about how to start, who to go to, who to trust, how much it will cost and whether your idea is even worth pursuing?

The following bullets are menu options under the Resource for Inventors Section this text not to be included on web page

Protecting and Marketing Your Innovation

An online tutorial at http://www.inventionconvention.com/ can help you learn about:

• Different Types of Idea Protection
• Initial Idea Protection - Without a Patent
• Does Your Idea Qualify for a Patent?
• Doing Your Market Research
• Applying for a Patent

Beware of Invention Scams

Michael S. Neustel, a U.S. Registered Patent Attorney, founded the National Inventor Fraud Center, Inc. (NIFC) with the goal to provide information to consumers about invention promotion companies and how people can market their ideas. Many inventors do not realize that some invention marketing companies charge thousands of dollars yet have success rates of 0.00%. The goal of the NIFC is to educate and help inventors make the right decisions. Learn how to avoid scams at: www.inventorfraud.com

You Have a Good Idea. Now What Do You Do?

Dr. Robert Hunter, former Montanan and a registered patent agent, has developed an invention tutorial for inventors. Some of the topics covered at Dr. Hunter's website www.webpatent.com include:

• Protecting Your Intellectual Property
• Provisional Patents
• Technology Management
• Inventor's Guide
• Licensing

Now Available: Commercialization Guide for MDA-Funded Researchers

Researchers interested in commercializing their MDA-funded technology often don't know where to begin. A new commercialization guide developed by the MDA Technology Applications program will solve this problem.

The guide is a compendium of online resources that explain the process of commercializing technology. Each page provides a brief description of a commercialization topic, with links to more detailed information or to related Web sites. Some of the commercialization issues addressed by the guide include:

• How can I obtain funding to keep my business alive?
• How do I prepare a business plan?
• How do I protect my intellectual property?
• How do I license my technology?
• How can I create a strategic alliance?
• What problems will I encounter when I scale-up my business?
• Where can I get professional advice?

 

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Doing Your Background Research

Developing your innovation will demand your business resources and your emotions. Before committing to that investment, you need to perform comprehensive searches of the commercial market, the peer literature in your field and the United States Patent Database. The information you develop will provide indicators about the social, commercial and technical viability of your innovation and create a foundation for making informed business decisions.

Conducting a Review of the Literature

Your innovation may take you into new technical arenas. You may already possess the necessary innovation expertise and just need to brush up on the current state of the art. Conducting a literature review will acquaint you with the research that surrounds or borders your area of innovation. You must be prepared to convince a technical expert proposal reviewer that you have the knowledge necessary for leadership in the proposed project field.

• To identify trade/scientific journals that may contain useful information try searching the Publist database, which contains more than 150,000 magazines, trade journals, newsletters, and other periodicals. Find FREE in-depth information on familiar and hard-to-find publications from around the world, representing thousands of topics. http://www.publist.com
• To find the latest information and research relating to your idea go to Infotrieve. This site contains a database of 10 million abstracts and 30,000 scientific, technical, medical and scholarly journals. http://www4.infotrieve.com
• The Defense Technical Information Center is the central facility for the collection and dissemination of scientific and technical information for the Department of Defense (DoD). Much of this information is made available by DTIC in the form of technical reports about completed research, and research summaries of ongoing research. http://www.dtic.mil/
• The National Technical Information Service (NTIS) is the federal government's central source for the sale of scientific, technical, engineering, and related business information by or for the U.S. government with complementary materials from international sources. Approximately 2.5 million products are available in a variety of formats including online, electronic, multimedia, CD-ROM, paper and microfiche. You can access information on more than 750,000 products from this web site. Thousands of new products are added weekly. Additionally, many records now include free links to the full-text publication on an agency's web site, or can be downloaded directly from the NTIS archival copy for a nominal charge. http://www.ntis.gov/

Market Research--Identifying the Competition, Similar Products, and Opportunities

The objective of the SBIR program is to fund innovation research and development for the ultimate goal of commercialization. Companies need to be planning commercially BEFORE they write the first proposal. One piece of this planning process is to collect information. Market knowledge may be found through library and on-line research, telephone inquiries, retail outlets and catalog searches, securing product samples, networking with the SBIR agency and manufacturing companies and more. The following bullets are key questions that must be answered through your market research:

• What are the different types of opportunities for my innovation?
• How is the problem you identified being solved now?
• Who is the end user?
• What can you find out about the geographic, demographic and psychographic profiles of your end users?
• Are there many end users or only a select few?
• What are the different types of markets in which the product might be sold?
• How do sales opportunities look?
• What are the industry trends?
• Is your end user a manufacturer, supplier, distributor, governmental entity, or private customer?
• How does your end-user conduct business (e.g., direct sales, contracts, request for proposals)?
• What industry standards or regulatory constraints might affect your concept?
• Do you know which Standard Industrial Classification Code (SIC) or North American Industry Classification System (NAIC) code(s) fit your technology?
• How Do You Answer These Questions?
• Conduct a keyword search, using a search engine like Google. www.google.com
• Identify trade associations that relate to your innovation or invention. Go to their websites, review the site's content, and/or contact association staff.
• Identify and review the web sites of your competitors.
• Identify and read industry trade journals.
• Conduct informal end-user surveys.
• Interview end-users and marketing people at the manufacturing companies.
• Review annual reports for the market leaders at http://www.sec.gov/edgar/searchedgar/webusers.htm
• Identify Montana demographic and economic data at http://ceic.commerce.mt.gov/
• Identify national demographic and economic data at www.census.gov
• To determine which SIC or NAIC code fits your technology go to: http://www.census.gov/epcd/www/naics.html
• To identify Montana manufacturers go to: http://www.mmis.umt.edu/
• To identify North American manufacturers use the Thomas Register of Manufacturers at: www.thomasregister.com or go to a library and use the American Manufacturers Directory.
• Forbes, at http://www.forbes.com/2002/05/09/bestplaces.html, is a good site to find articles and other useful business information.
• Thomas Regional at http://www.trendonline.com/, is a site to identify products/services from more than 500,000 distributors, manufacturers and service companies.
• National Technology Transfer Center provides information on commercializing technologies. http://www.nttc.edu/

Performing the Preliminary Patent Search

A major requirement of successful participation in the SBIR Program is a demonstration of idea innovation. Agencies that offer SBIR grants expect applicants to verify that the proposed idea is unique, new and innovative.

One of the first steps to verify the authenticity of your idea is to conduct a patent search. A patent is actually a right, granted by a government or quasi-governmental authority, to exclude others from making, using or selling an invention within a certain jurisdiction for a limited period of time. A patent does not give its owner the right to make, use or sell a claimed-invention, because practicing one's own invention may infringe on the claims of a prior-issued patent that has not expired. One of the first steps in determining the uniqueness of an idea is to search the United States Patent and Trademark Office patent database.

Caution: In the U.S., it is not necessary for an inventor or organization to be represented by a patent professional. However, a patent agent or a patent attorney registered to practice before a patent office can provide invaluable assistance to an inventor or organization seeking to evaluate and protect new technologies. Selecting an appropriate professional can be an important step in maximizing the value of an innovation. Links to lists of registered patent agents and patent attorneys by geographic region can be found at: http://www.uspto.gov/web/offices/dcom/olia/oed/roster/region/index.html

Reviewing the Agencies Websites to Find a Topic That Matches Your Idea

There are ten federal agencies that offer SBIR grants. For a company to compete at the federal level, it must have an idea that matches one or more of the topics defined in the agency's solicitation. To identify appropriate agencies that match your idea go to: http://sbir.mt.gov/Fedagency.html. You must identify the agencies that fit your idea or innovation. Once you have identified the appropriate agency (ies) review the following areas:

• The general program description of the agency's SBIR Program.
• The solicitation topics. You will want to find one that matches your idea.
• Past awards granted by the agency. What type of projects has this agency funded over the last three years?

Finding the Outside Professionals for Your SBIR Technical Team

Your company will be expected to demonstrate technical leadership in your chosen field. That does not mean that you must have all of the expertise on your staff for every aspect of a project. It is often advantageous to work with an outside professional, particularly if that individual adds high level credentials to your team profile. The best places in Montana to locate research and analytical assistance is through our University System and federal laboratories. There are many private consultants and firms that can assist with engineering, drawing, machining, field trials, lab work and more.