technology transfer tactics

© 2012 University of Utah Research Foundation

Technology Transfer Tactics


NEGOTIATIONSTRATEGIES

Zachary Miles, Esq, Deputy Director

Technology Transfer TacticsJanuary 29, 2013


What are we talking about?

- Tactics people use is negotiations- High Hat- WhipSaw- Good Cop, Bad Cop

- Ways to combat these tactics- All about Preparation- Setting Expectations- Transparency

- Unintended consequences- Never do a deal again- Lack of trust- Reputation- Legal Issues


The High Hat

• Complain to your boss the deal is stalled, ask them to appoint someone else or handle the deal personally

• Blame your inexperience, lack of flexibility, or lack of authority

• Usually keep the door open for a follow-up with the boss, to keep you on edge

To block it: make sure the boss knows and trusts you, and knows such tricks are used!


The Whipsaw• Can happen if licensee is funding the lab

• You think the negotiations are going well

• They tell the inventor you are screwing up the deal, threaten to cut off funding

• The inventor blasts you (or your boss!), pressures you to back down

To block it: Tell the inventor to expect the call! Ask them to express confidence and refer back to you


Good Cop, Bad Cop

• One is demanding, confrontational, stubborn; the other is supportive, kind and friendly

• Good cop is equal to or works for the bad cop

• The fallacy: the good cop is trying to help you satisfy the bad cop!

To counter: two ways, based on authority:– Ignore good cop, force bad cop’s hand– Ignore bad cop, concede little to good

cop


Ways to Combat These Tactics

PREPARATION-Find out a bit about the person or organization you are dealing with.

- Reputation- Other types of deals they have done

-Have a standard set of terms for industry specific techs- Commercial norms- Past agreements you have done

-Standardized Agreements- CDA- License- Term Sheet


TERM SHEET (EXAMPLE)

Exclusive/Non-Exclusive Discussions

TCO hereby agrees that it will not actively promote Technology to any other potential licensees during the course of discussions between Company and TCO.

TCO Response Time

Barring unforeseen circumstances, TCO will respond to all of Company’s correspondence within 48 hours of receipt. Company acknowledges that TCO may have to work with the University’s Office of General Counsel if certain terms in the license agreement are modified and this may require additional response time.

Negotiations. Both parties agree that any negotiations that take place during the course of discussions between the parties shall be conducted in good faith.

Miscellaneous TCO makes complete effort toward full disclosure. However, TCO has limited resources to complete a thorough due diligence. Company is therefore obliged to perform its own due diligence. Moreover, the University of Utah is an academic institution and will continue to work with its academic collaborators.


Ways to Combat These TacticsSETTING EXPECTATIONS/TRANSPARENCYUNDER-PROMISE OVERDELIVER !!!

-Get everyone on the same page from your side- VP, OGC, OSP, IRB, COI, whatever it takes

-What is being licensed- What type of IP- What can or can not be negotiated (dangerous as you can negotiate

against yourself)-Who has to be involved

- Who can sign- Who has to review

-Timing- When you will get back to them- How long negotiations will take


UNINTENDED CONSEQUENCES

• Never Do a Deal Again– If it is a good deal may have to convince “boss” due to prior

history• Lack of Trust

– Always wondering– Overcautious?

• Legal (I am not your attorney, seek your counsel )– Bad Faith– Verbal Agreement– De Facto Agent

• Reputation– It’s a small world– Difficult if not impossible to repair


THE END

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