Question: I filed for patent protection. Should I still have potential Licensees sign a secrecy agreement?
Answer: Secrecy Agreements can get in the way of licensing discussions. Many companies you approach will not sign secrecy agreements. In fact, large companies often require you to sign an agreement confirming that they are not bound by secrecy. If discussions are going well, do not hesitate to reveal more information. Bear in mind that a patent application is not “made public” until 18 months after its filing date. The company you are negotiating with can only see such information as you choose to share with them. If you feel that they are just pumping you for information, do not share more information until they show their good faith by placing a serious proposal before you. These types of proposals are called Letters of Intent, they contain a financial proposal that is subject to receiving and reviewing further information.
Question: What should I ask for?
Answer: Generally it is best to capture the company’s interest and then invite them to make the first proposal. There are a number of reasons for this. A first reason is that you may undervalue the technology, whereas if you let them make the first proposal you generally will get more. A second reason is that you may overvalue the technology. If the company feels you have unrealistic expectations, the company may break off negotiations. A third reason is that every industry has “industry norms”, for example 5% is a typical royalty in some industries. A fourth reason is that many companies have a “history” of past dealings that they are influenced by (i.e., “this is how we generally structure our licensing deals”). If you can get a company to make any form of proposal at all, there is potentially a deal to be made. The greatest problem in licensing is facing the enormous inertia in every industry. Unless a prospective licensee is actively looking for a better way of doing things, it can be difficult to get their attention if what the industry has been doing for years is still “working” just fine. An industry executive can lose his or her position spending money on a solution when there was no generally understood problem.
Question: What should I expect to see in the proposals received from companies?
Answer: It is unlikely that you will be offered a single large lump sum payment. Instead you are likely to receive an offer that includes an initial payment of $10,000 to $50,000 and a royalty percentage of sales. The reason for this is that an executive who pays a huge lump sum on a technology that does not work out is placing his or her career in jeopardy. If the technology proves itself over time, a buyout offer may come down the road.
Question: How do I know if the proposal is reasonable?
Answer: There are “rules of thumb” that are applied to gauge whether a proposal makes sense. One such rule is the “rule of 25”. The rule of 25 is sometimes criticized as not taking into account all factors. This is true, but it works for many situations. Under the Rule of 25, the labour and materials required to manufacture a product are deducted from a wholesale price for the product to arrive at a gross profit figure. This gross profit figure intentionally does not include overhead, advertising or administrative costs. According to the Rule of 25, the company is taking all of the risks and should be entitled to 75% of the gross profit. You receive 25% of the gross profit for bringing this opportunity to them and providing patent protection to protect their market. However, the final royalty percentage is never set out in a license agreement as 25% of percent of gross profit. Instead the royalty is converted to a percentage of the wholesale invoice price. The reason for this is that you need a number that can easily by audited by an inspection of customer invoices.
We stated above that the Rule of 25 does not take into account all factors. For example, the Rule of 25 does not take into account additional costs that may be incurred in preparing to manufacture a new product. This can easily be accommodated through a “step royalty”. A step royalty is a royalty that steps up or down, depending upon the circumstances. To accommodate the costs incurred in preparing to manufacture, you may agree to take a lower royalty until those costs are recovered and then your royalty will “step up” to a higher level. Step royalties are used in a variety of situations. For example, to get volumes up, royalties sometimes “step down” with volume. In such a situation there may be a royalty of 7 % on the first 50,000 units sold each year, a royalty of 5% on the next 50,000 sold each year and a royalty of 4% on all units over 100,000 sold each year.
Question: Is there any rule of thumb for assessing a lump sum offer?
Answer: Accounting firms can make projections to determine the amount of royalties expected to be generated over the life of a patent. The accounting firms can then give you a “current value assessment” so that you have a calculation of what lump sum is appropriate as a replacement for the royalty. This works well when you have been receiving royalties for a number of years. When the product has not even been on the market and has no sales history, the number is essentially a creative fiction, even working from the best information available. Even when royalties have been paid for a number of years, the accounting firm must make some assumptions regarding changes to product price due to cost of living and growth of market share that may turn out to be false. When you have a large lump sum offer presented to you, consider what the alternatives are and how receiving the funds will affect your life.
One client of mine received a 10 million dollar offer and turned it down. The reason was that he was perfectly happy with the quarterly royalties he was receiving and it did not take an accountant to see that he would be making well over 10 million dollars over the next 5 years by simply keeping his existing royalty stream. Another client of mine received a 2 million dollar offer and accepted it. There were no sales. He could not afford to put the product on the market himself. If the 2 million dollar offer was withdrawn he had no viable alternative. He had a wife, two young children, a mortgage and debts incurred in developing the technology. Receiving the 2 million dollars now would have a major positive impact on his life.
Question: What should I look out for in any proposal?
Answer: It is a mistake to focus just on the financial details of the offer. One should look carefully at what obligations are being imposed back upon you. Those obligations could cost you more than you will receive. Who has to pay the expenses associated with completing and maintaining patents in Canada and the United States? If the company wants foreign patent protection, who has to pay the expenses associated with completing and maintaining the foreign patents? Who has to pay the expenses associated with enforcing the patent against infringers?
If you have granted an “exclusive” license (which often is the case), you need minimum performance requirements to ensure that your technology is not shelved.
On a human level, you and your technology need a “champion” within the company. Someone you feel is committed to the technology and will drive the implementation of the technology within the company. Preferably, someone you can relate to.