AUTM Journal Volume IX 1997


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Table of Contents

  • Managing the University Technology Licensing Process: Findings from Case Studies
    By David H. Hsu and Tim Bernstein
  • License Agreements: Are You Getting the Royalties You Bargained For?
    By Dan Burns and Jon Sandelin
  • Protecting Your Royalty Payments Using Audit Clauses in License Agreements
    By Vincent J. Kiernan
  • Biotechnology: From Enablement to Infringement
    By David L. Parker
  • Induced Investments and Jobs Produced by Exclusive Patent Licenses -- a Confirmatory Study
    By Peter B. Kramer, Sandy L. Scheibe, Donyale Y. Reavis, and Louis P. Berneman

Editor's Preface

In this ninth edition of the AUTM Journal, we offer our readers a most delicious sandwich. Between two progressive and substantial analytical pieces on the larger issues of the economics and dynamics of university licensing operations, readers will discover a fine trio of practical and valuable offerings. 

In two instructive articles, Dan Burns and Jon Sandelin ("License Agreements: Are You Getting the Royalties You Bargained For?") and Vincent Kiernan ("Protecting Your Royalty Payments Using Audit Clauses in License Agreements") present instruments that all licensing professionals can use in drafting and exercising audit clauses to ensure that a licensee pays fair royalties. Mr. Kiernan focuses on actual language that licensing practitioners can use to avoid problems and to ensure a high standard of reporting and auditing royalties, while Messrs. Burns and Sandelin write from the perspective of Stanford University's experience of conducting royalty examinations, including broad recommendations to ensure that the process has minimal negative impact on licensor/licensee relationships.

David Parker's timely piece, "Biotechnology: From Enablement to Infringement," introduces readers with and without legal training to the latest trends in biotech patent coverage. He does so in a highly readable and enjoyable manner, yet provides all levels of readers, non-biotech technology transfer professional to patent attorney, with meaty material on a complex and fast-moving subject that is of increasing importance as many biotech products near the marketplace and patent holders stand to reap substantial royalties from their sale.

For long-range planning and historically interesting food for thought, the reader can consult our anchor articles first and last. David Hsu and Tim Bernstein have produced a thorough,thoughtful, and interesting treatise on the value added by a spectrum of technology transfer activities and the dynamics of varying the emphasis upon one or another activity. "Managing the University Technology Licensing Process: Findings from Case Studies" makes thought-provoking reading, including an analysis of the history of university technology transfer and many practical and insightful suggestions on how we can use scarce resources to accelerate our goals. The authors also balance the impact that real everyday impediments have on certain of their "best-of-all-worlds" suggestions. Recom-mendations regarding the role of AUTM in catalyzing interaction among its members should be of particular interest to planners within the organization.

Finally, Peter Kramer, Sandy Scheibe, Donyale Reavis, and Louis Berneman have used the Pressman et al. method (see AUTM Journal Volume VII, 1995, showing the investments induced by patent licenses from MIT) to replicate and support Pressman's results using information on University of Pennsylvania technologies. While the authors note that further confirmatory studies would be useful, this paper verifies the "induced investment" method to measure pre-commercialization impact of university technology licensing on the economy and further underscores the importance of AUTM's activities.

Many thanks to all the authors for their efforts, attention, and time throughout the editing process. We encourage our readers to submit original papers on topics of interest to professional technology managers. Those contemplating writing an article or a letter to the Editor are asked to contact the Managing Editor for content and review procedures.

Beatrice Bryan, Editor, September, 1997