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78188 Intellectual Property Commercialisation

Warning: The information on this page is indicative. The subject outline for a particular session, location and mode of offering is the authoritative source of all information about the subject for that offering. Required texts, recommended texts and references in particular are likely to change. Students will be provided with a subject outline once they enrol in the subject.

Subject handbook information prior to 2019 is available in the Archives.

UTS: Law
Credit points: 6 cp
Result type: Grade and marks

Requisite(s): (78184 Intellectual Property: Law and Policy AND 78101c Postgraduate Legal Research) OR 78184 Intellectual Property: Law and Policy OR 77905c Preparing for Intellectual Property Practice OR ((94 credit points of completed study in spk(s): C04236 Juris Doctor OR 142 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration OR 94 credit points of completed study in spk(s): C04363 Juris Doctor Master of Intellectual Property OR 94 credit points of completed study in spk(s): C04364 Juris Doctor Graduate Certificate Trade Mark Law and Practice) AND 70106c Principles of Public International Law AND 70107c Principles of Company Law AND 78184 Intellectual Property: Law and Policy) OR (94 credit points of completed study in spk(s): C04320 Juris Doctor Graduate Certificate Professional Legal Practice AND 70106 Principles of Public International Law AND 78184 Intellectual Property: Law and Policy)
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
These requisites may not apply to students in certain courses.
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 78189 Intellectual Property Commercialisation AND 79006 Intellectual Property Commercialisation

Description

This subject covers much of the law and some of the business and economics of buying, selling and licensing intellectual property (IP). IP is a broad field, including patents, trade secrets, copyrights, semiconductor chip protection, trade marks, trade dress, internet domain names, and rights of publicity. Licensing of intellectual property takes many different forms in different types of businesses. Research and manufacturing businesses typically buy, sell and license technology, such as patents and trade secrets. They also may trade in copyrights (for example, in computer programs) and protected semiconductor chip designs. Multimedia licences, such as those for films, video games, and multimedia websites, often involve a number of copyrighted properties, and virtually every business has a trade mark or trade name that might or must be licensed and sometimes is sold (for example, in a merger or acquisition).

This subject discusses most, if not all, major types of businesses and their practices in buying, selling and licensing IP. It also touches on some of the basic principles of using IP as collateral or security for other transactions, for example, bank loans. This subject focuses primarily on technology licensing (of patentable inventions and trade secrets), but also discusses 'soft' IP, including such things as copyrights in literary and entertainment properties, websites and computer software and multimedia properties like video games.

The subject is interdisciplinary. About one-third of its substance explores the business and economic aspects of licensing, including the scope of a licence, how licensors make money, and how business people estimate the economic value of IP and licensing rights. Another third discusses legal considerations in licensing, including relevant IP law, antitrust or competition law, involuntary licensing by operation of law, standing to sue and the problems of co-ownership, the problem of 'clearing' legal rights in IP, and selected issues in international practice, such as jurisdiction and enforcement. The final third involves practice or 'skills' training in drafting and negotiating licences and getting a 'sense of the deal' in licensing transactions.

An Australian practitioner engaged in IP licensing almost invariably has dealings with the US and/or Europe and thus must have an awareness of different approaches taken by those jurisdictions to licensing such as the analysis of the anti-competitive effects of a licence. The subject therefore includes an overview of the competition laws of Australia, the US and the EU, as they may affect licensing transactions.

Subject learning objectives (SLOs)

Upon successful completion of this subject students should be able to:

1. Apply an advanced and integrated understanding of intellectual property law in Australia together with issues in international licensing according to national or supranational jurisdictions, including the US and the EU;
2. Identify the business and economic context of licensing and analyse how business people ‘trade’ intellectual property in order to realise commercial objectives;
3. Demonstrate sophisticated cognitive and creative skills in approaching intellectual property from a client’s perspective;
4. Apply critical analysis and evaluation to generate solutions that meet clients’ commercial objectives;
5. Critically analyse a draft licence agreement to identify deficiencies demonstrating an holistic comprehension of the ‘sense of the deal’, use appropriate legal clauses and adhere to key business provisions.

Course intended learning outcomes (CILOs)

This subject also contributes specifically to the development of the following graduate attributes which reflect the course intended learning outcomes:

  • Legal Knowledge
    An advanced and integrated understanding of a complex body of legal knowledge, including the Australian legal system, social justice, cultural and international contexts, the principles and values of ethical practice, and contemporary developments in law and its professional practice (1.0)
  • Critical Analysis and Evaluation
    A capacity to think critically, strategically and creatively, including an ability to identify and articulate complex legal issues, apply reasoning and research to generate appropriate theoretical and practical responses, and demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses (3.0)
  • Communication and Collaboration
    Effective and appropriate professional communication skills including highly effective use of the English language, an ability to inform, analyse, report and persuade using an appropriate medium and message and an ability to respond appropriately. (5.0)

Teaching and learning strategies

Strategy 1: Learning through engagement with each topic

Students prepare for each topic by completing readings from the prescribed text, e-readings, watching videos and viewing websites. Preparation and reflection on the material presented in each Topic is central to the learning in this subject. In class instruction and discussion will form the basis of each class. Not all topics will be covered in class in-depth. To ensure that classes can provide the most effective learning experience students are expected to have read the minimum required readings for each class.

Strategy 2: Learning through discussion and activities

Students use the discussion area for each Topic to ask questions or share ideas. Students engage in collaborative discussion and evaluation of the materials in each Topic, which assists them in developing new perspectives, testing their ideas and understanding, and identifying areas for clarification.

Discussion questions will be provided for each Topic and each student will be required to participate in group discussions and make a presentation from time to time reporting the outcome of group discussions to the rest of the class.

By actively participating in the guided activities, self-assessment questions and discussion questions in each Topic, students test their learning, clarify understanding and challenge ideas about the material presented for each Topic. Students also have the opportunity to ask questions of their peers and of the teacher to assist them in consolidating their own learning.

Teachers and guest speakers will provide perspectives on the recommended readings and clarification of the law. The ability to listen and think at the same time is a crucial skill for a lawyer or legal adviser, who will often need to master new information delivered orally and/or in writing and provide an intelligent response immediately. Participation in discussion and various activities in each Topic will extend the ideas of the lecture in new directions or in greater depth.

Strategy 3: Learning legal skills: legal analysis and problem solving

The ability to solve legal problems is an essential skill for a legal adviser. Problem-solving involves interpreting and analysing legislation and cases, and applying the legislation and principles developed through the case law to novel and difficult factual situations. Students practice legal problem solving skills by preparing for and participating in online or class discussion and by completing the drafting exercise.

Strategy 4: Learning legal skills: effective written communication skills

The ability to communicate the thrust of a legal argument through effective written advocacy is an essential skill for a legal adviser. Increasingly legal advisers are asked to prepare written submissions setting out and arguing for a client’s position. Students test and practice their communications skills by participating in class or online discussions and by completing the drafting exercise.

Strategy 5: Feedback

Detailed guidance as to the assessment criteria and the provision of timely feedback are an important part of the learning process. This process is enhanced by the formative activities in each Topic, which inform and consolidate student learning of key concepts. Students are also able to obtain guidance on their progress and to test their learning by participating in a variety of substantive activities including: the early low stakes online quiz; class discussions; and the drafting exercise.

Subject Delivery

This subject is taught in a three hour seminar on Thursday evening each week for eight (8) weeks (6pm - 9pm). Students who are located in Sydney are strongly encouraged to physically attend in class. For those who cannot, there is a Zoom video conference which enables real time participation that is treated as being in class. For others, the Zoom video conference is recorded and can be accessed after the date of the class. Online students who don't participate in the Zoom conference will be required to participate in discussion boards and other online activities. All students will be expected to have reviewed relevant materials on Canvas and have read the applicable materials prior to the relevant class as well as considering discussion questions.

Attendance/online participation is required for each class. The aim of the teaching strategies for this subject is to foster an effective learning environment for students. Accordingly, this subject is taught using lectures/seminars and Canvas.

Content (topics)

Content Modules

  1. Review of types of intellectual property (IP) from a licensing perspective: what legal doctrines matter most for licensing and transfers; pitfalls of co-ownership. International Agreements. Business structures for Commercialisation.
  2. Types of Licensing agreements: Business aspects of licensing agreements: key commercial and business terms for licensors and licensees; how each side makes money; each side’s most vital interests and how to protect them. Preparation for licensing including audits and valuation. Implied licensing and compulsory licensing, including denial of injunctive relief; equitable licences; shrink-wrap and “click-wrap” licences: Standing to sue. Dispute resolution.
  3. Multimedia licensing; rights “clearance;” common terms in licensing agreements, their risks and opportunities, and how to draft them; co-ownership of IP.
  4. Drafting licences: interpretive rules; clarity and ambiguity; covenants and conditions; the role of word placement; the importance of brevity and simplicity ("less is more"); drafting for performance; self-editing; key scope and financial terms: key legal provisions, assignment and sub-licensing.
  5. Antitrust and competition law in licensing: monopolisation/abuse of dominant position; illegal tying; vertical and horizontal restraints.
  6. Misuse of intellectual property; sovereign immunity; IP as collateral (PPSA); insolvency; tax considerations.

Assessment

Assessment task 1: Multiple Choice Online Test

Objective(s):

This task addresses the following subject learning objectives:

1 and 3

This task contributes specifically to the development of the following graduate attributes:

1.0 and 3.0

Weight: 5%
Length:

Equivalent to 500 words

Criteria:

The multiple choice questions will test a student’s ability to:

  • Identify and analyse the different forms of intellectual property rights from complex choices,
  • Identify and analyse the key elements for validity of each form of intellectual property rights,
  • Determine the life of the protection, and
  • Analyse and evaluate the domestic and international laws applicable to different forms of intellectual property rights.

Assessment task 2: Class Participation

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3, 4 and 5

This task contributes specifically to the development of the following graduate attributes:

1.0, 3.0 and 5.0

Weight: 10%
Length:

Equivalent to 1000 words

Criteria:
  • Demonstrating an integrated understanding of the subject matter relevant to the discussion question.
  • Applying critical analysis and evaluation to the issues raised by the question.
  • Contributing to a collaborative learning environment by taking initiative to generate and respond to discussion.
  • Generates solutions to complex legal problems.
  • Clarity of expression, use of appropriate language and a demonstrated ability to formulate responses in clear and succinct terms.

Assessment task 3: Licensing Drafting Exercise

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

1.0, 3.0 and 5.0

Weight: 25%
Length:

Word limit: 1500 words

Criteria:
  • Identifies and addresses all important business and legal issues.
  • Constructs effective solutions to contentious issues so they are resolved to the satisfaction of all parties.
  • Drafting avoids ambiguities and other substantive problems.
  • Effective expression, structure, tone and writing.
  • Grammar, spelling and punctuation will count, but not as much as substance.

Assessment task 4: Take-home exam

Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3, 4 and 5

This task contributes specifically to the development of the following graduate attributes:

1.0, 3.0 and 5.0

Weight: 60%
Length:

3000 words

Criteria:
  • Correct, complete, thorough and accurate answers including reasoned explanations for choices amongst complex alternatives
  • Good judgment in determining what issues, sub-issues and sources of law to discuss (there may not be enough time or space to address all possible issues)
  • Support for the answers and explanations in the form of citation to legal principles and/or legal authority
  • Absence of extraneous and erroneous matter
  • Prioritisation of answers and reasons, with the most important first, and
  • Clarity in expression and structure. Answers may be “close calls” or matters of judgment, so explanations may be as important or more important than “correct” answers.

Required texts

Natalie P Stoianoff, Fred Chilton and Ann L Monotti, Commercialisation of Intellectual Property, Lexis Nexis Butterworths, Australia 2019

Recommended texts

These readings are recommended and are not intended to be exhaustive. Students are encouraged to use the Library catalogue and databases to locate additional resources.

Gary N. Keller, Guide On Intellectual Property (IP) Commercialization, Committee on Development and Intellectual Property (CDIP), Sixteenth Session, Geneva, November 9 to 13, 2015, CDIP/16/INF/4, September 30, 2015, available at <http://www.wipo.int/edocs/mdocs/mdocs/en/cdip_16/cdip_16_inf_4.pdf>

ACIPA, Intellectual Property and the Commercialisation of Research and Development - A Guide for Horticulture Industries, 2006, available at <http://acipa.edu.au/pdfs/intellectual-property-for-commercialisation-of-research-and-development.pdf>

Kenneth L. Port, Jay Dratler et al, Licensing Intellectual Property in the Information Age (2d ed., Carolina Academic Press 2005) ( also known as Port et al, hereinafter, 'Casebook') (this book is also available from online bookstores - it should also be available through LEXIS) some chapters will be provided on Canvas.

R. Reynolds, N.P. Stoianoff, A. Roy, Intellectual Property Law: text and essential cases, (5th ed, Federation Press, Sydney, March 2016), 782 pages (hereinafter, 'the IP Book')

Paul McGinness, Intellectual Property Commercialisation - A business manager's companion, Lexis Nexis Butterworths 2003

M. Calvert, Technology Contracts, A Handbook for Law and Business in Australia, Butterworths 1 Oct 2002 2nd Edition. The library may have the second edition.

Other resources

Jay Dratler, Jr. & Stephen McJohn, Intellectual Property Law: Commercial, Creative, and Industrial Property (four-volume treatise) (Law Journal Press 1991 & Supps.), available on line on LEXIS under acronym IPLCCIP, as described at http://gozips.uakron.edu/~dratler/treatises/handling.htm#online (visited Nov. 22, 2009).

These works deal with specific topics in much greater depth.

Jay Dratler, Jr., Cyberlaw: Intellectual Property in the Digital Millennium (Law Journal Press 2000 & Supps.), available on line on LEXIS under acronym CIPDM, as described at http://gozips.uakron.edu/~dratler/treatises/handling.htm#online (visited Nov, 22, 2009).

David M. Epstein, Eckstrom’s Licensing in Foreign and Domestic Operations (Thomson-West 1972 & Supps.) (binder/looseleaf)

Derek Bosworth & Elizabeth Webster, The Management of Intellectual Property, Edward Elgar, 2006 David W Tollen, The Tech Contracts Handbook ABA

Ira Jay Levy & Joseph Yang, Advanced Licensing Agreements (2014) (PLI #51356)

Les Nouvelles, Journal of Licensing Executives Society