All Rights Reserved. GTRC. Atlanta, Georgia 30318 Georgia Tech Integrated Program for Startups Inventing the Future 2012 Technology Commercialization:

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All Rights Reserved. GTRC. Atlanta, Georgia Georgia Tech Integrated Program for Startups Inventing the Future 2012 Technology Commercialization: Licensing and Manufacturing Insights Kevin Wozniak Executive Director Industry, International, Innovation

All Rights Reserved. GTRC. Atlanta, Georgia Georgia Tech Integrated Program for Startups Licensing Tips – Why License Introduce intellectual property into company -Facilitates launch of product(s) -Avoid infringement/strengthen patent portfolio Expand use of your intellectual property -Value in a different industry -Foreign market penetration Universities can be a good resource for IP

All Rights Reserved. GTRC. Atlanta, Georgia Georgia Tech Integrated Program for Startups Licensing Tips – Beyond Monetization Rights granted -Exclusive vs non-exclusive -Access to source code -Know-how Prohibition of use/fields of use -Product type -Regions Transfer or sublicense rights

All Rights Reserved. GTRC. Atlanta, Georgia Georgia Tech Integrated Program for Startups Licensing Tips – Beyond Monetization Warranties -IP versus product Limitation on liabilities -Conditions licensor is reasonable Indemnification -Obligation of the parties to “cover cost” -IP infringement -Product ‘failure’

All Rights Reserved. GTRC. Atlanta, Georgia Georgia Tech Integrated Program for Startups Licensing Tips – Things to Consider Monitoring compliance can be burdensome -Development -Sales/royalty payments Enforcement -Joinder -Can be difficult…and expensive

All Rights Reserved. GTRC. Atlanta, Georgia Georgia Tech Integrated Program for Startups Licensing Tips – Things to Consider Control -Assignability -Quality control (on products) Use of counsel -IP attorney for IP -Contracts attorney for contracts

All Rights Reserved. GTRC. Atlanta, Georgia Georgia Tech Integrated Program for Startups Manufacturing Tips Consider IP protection -Not only where you will sell, but where you will manufacture Export control compliance Ensure consistent with license terms

All Rights Reserved. GTRC. Atlanta, Georgia Georgia Tech Integrated Program for Startups Manufacturing Tips Universities are usually not a manufacturer -Specialized equipment can be available but… Look for private/public partnerships -Global Center for Medical Innovation