Exclusive license vs. ownership of Intellectual Property

Intellectual Property (IP) is a sensitive and often cleaving topic. I have already addressed the topic here, check the hashstag #intellectual-preperty (or also #licensing). But even once the general value of IP is addressed, there are tons of secondary issues.

One is the specific question of how ownership of IP by a startup vs. an exclusive license granted by an academic institution is considered, in particular by investors. On January 27, 2022, I send an short email to 300+ investors and I got about a 10% response rate. In parallel, I mentioned the topic on my LinkedIn account and I got additional comments. Although, there is a rich argumentation about pros and cons of both situations, so that the reader may want to have a careful look at the full answers, here is my synthetic understanding:

There is no fundamental difference between license and transfer from the point of view of the startup’s strategy, except what happens in the event of bankruptcy or liquidation. The license is not an asset and therefore the intellectual property is no longer usable. With this nuance, admittedly significant, there are two additional points:
– Some investors think that the owner pays for the maintenance of the IP and suits the possible “infringers” to defend this property. I don’t think that’s the case because in my experience it’s the licensee who does that.
– In case of a trade sale, it is important that the license can be transmitted and this is a major item, that is to be guaranteed. There maybe political or strategic issues though.
Finally, a price for the transfer may be added when or if possible.
There is no doubt that the reputation of the institution and the stability of these acts are essential. (There would be more to add like equity vs. (capped or not) royalties in the license terms, milestones and many details… I tried to be as short as possible).

You can download here pdf file Survey on license vs ownership of IP.

Survey on license vs ownership of IP – Lebret – 1Feb2022

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