Field-of-Use Licensing

by Sandra L. Shotwell, Ph.D.

Managing Partner, Alta Biomedical Group, LLC

Field-of-use licensing provides the licensor with greater control over the use of its intellectual property, while maximizing the use and value of the technology. In order to maximize the use of a given technology, managers will have some additional work to do as they identify, negotiate with, and manage more than one licensee. Special issues related to multiple licensees in distinct or overlapping fields will have to be handled with forethought and a balancing of interests.

When is field-of-use licensing worth the extra effort? When more than one company is needed to fully develop a technology’s potential, when different licensees are needed to address different markets, or when field-of-use licensing has the potential to significantly increase the financial return from a technology. In all of these situations, field-of-use licensing can produce better results for everyone involved.

Shotwell, S.L. 2007. Field-of-Use Licensing. In Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices (eds. A Krattiger, RT Mahoney, L Nelsen, et al.). MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at iphandbook.org.

Russell Parr Presentation on Royalty Rates to the Licensing Executives Society

As we are just launching this new blog on the financial aspects of IP, I wanted to highlight a recent event of interest to all involved with intellectual property valuation and licensing.

At the inaugural meeting of the Portland/SW Washington chapter of the Licensing Executives Society (LES), Russell Parr recently presented an overview of his just published booklet titled "Determination of Royalty Rates". This was the largest inaugural meeting for any LES chapter and it was terrific to have attracted a speaker like Russell, a luminary in the area of valuation of intellectual assets.

The booklet describes various approaches along with examples of determining royalty rates using multiple analytical techniques. These include infringement damages analysis (profit differential), comparable transactions, investment rate of return, and discounted cash flow. A copy of the booklet is available at no cost via email request to booklet@innovation-asset.com.

For those of you who would like to see a video of Russell's presentation, I've included it below with a link to the entire video.




Shawn Pilkington, VP at Innovation Asset Group, is the new chairman of the Portland/SW Washington LES chapter and kicked off the meeting. It was a great night and terrific to see the spectrum of attendees from the technology, corporate, and legal communities in the Portland metro area.