You are on page 1of 14

Unit 2: Step 2

Analyze main actors and concepts to consider in a

technology negotiation

Israel Palacio Ocampo



Karla Nathalia Triana


Valuation and Negotiation of Technology

National Open And Distance University

Manizales - Caldas
March - 2018
3.1 Patents:

• What is a patent?
It is a right of exclusivity granted by the State to protect and exploit an invention. A
patent is the counterpart to the fact of protecting an invention by reservation or secret
and, as such, requires that the applicant of the patent make public his invention
through a patent application, so that an expert in the matter referred by such request ,
can reproduce the invention. In exchange for publishing his invention, the applicant
obtains, as was said, a right that allows others to prevent any form of commercial
exploitation of the invention within the territory of obtaining the patent and for a
limited period of time.

• What is the competitiveness regulatory agency of the Government

of Colombia in charge of acting as the Colombian patent and registration
The regulatory body of Colombia patents is the superintendence of industry and
commerce, which among its functions is intellectual property. This entity has on its
website an interactive guide to process trademarks and patents, which explains
the step by step in order to apply for a patent. Below is the link of the guide: URL:
• What is a utility model patent?
A utility model will be any object or similar in which a change, both from its
external form and in its operation, produces a utility, benefit, advantage or
technical effect that the object, before the modification, did not have. Here you
can classify varied things such as technological developments, drug
developments, useful processes, machinery, utensils, tools, composition of
matter, or improvements to something already existing.
• Is a patent valid in every country?
No, patents are territorial and for registration to be valid in other countries, there are two
ways to carry out the process:
 Through the Paris Convention. According to the World Intellectual Property Organization
(WIPO), "the applicant may directly submit several patent applications, at the same
time, in all countries where he wishes to protect his invention." In addition, WIPO states
that "the applicant may submit several separate patent applications in other member
countries of the Paris Convention, within 12 months from the date of filing of the first
patent application".
 The PTC pathway. According to WIPO, "the applicant may submit an application under
the PTC, directly or within 12 months from the date of filing of the application. This
presentation is valid in all the Contracting States in English, so it is a simpler way, more
practical and more economic than the direct route or the Paris Convention. "
• How long does an innovation patent • How long does a utility patent last?
last? Utility model patents. (10 years
Innovation patents. (20 years of protection) Once the duration time has
protection from the date of submission) elapsed, the invention is in the public
domain and anyone can use it freely.
3.2 Copyrights:

 What is copyright?
It is the protection granted by the state to the creator of literary or artistic works
from the moment of its creation and for a certain time. Copyright is the set of rules
that protect the author as the creator of a work in the literary and artistic field,
understood this, as any human expression product of ingenuity and talent that is
materialized in any way perceptible by the senses And in an original way.

 What is the difference between moral and property rights?

 The author's patrimonial rights refer to the rights of economic exploitation on his
works and creations that the author has. The author can dispose according to his
will of the economic exploitation of any work of his authorship, therefore, without
the authorization of the holder of the right it is not possible in a legal way to
exploit economically a work
 The moral rights refer to the personal right that recognizes and safeguards the
link between the author and his work, which recognizes the authorship of the
work, since the work is the product and result of its author, this cannot be
unrecognized since there is an unambiguous and inalienable link between the
two. The author cannot exist without his work or the work without his author. As
the work product and creation of its author, the moral rights are not transferable,
they are unseizable and inalienable and have no limitation in time.
 What is the competitiveness regulatory agency of the Government of Colombia in
charge of copyrights registration?
The Colombian State through the Special Administrative Unit National Directorate of
Copyright, for the whole national territory. Its purpose is to provide the owners of
copyright and neighboring rights with a means of proof and publicity to their rights,
as well as to acts and contracts that transfer or change that domain covered by the
law. It also provides a guarantee of authenticity and security to the titles of copyright
and related rights and to the acts and documents referred to therein.
Artistic: They are those that
• What can be protected in Colombia, using impact the aesthetic sense of
copyrights? Copyright protects literary, those who contemplate them
scientific and artistic works (LIPSZYC, Delia pag. 77 of their
Manual of copyright,
• Unpublished and published literary works CERLALC/UNESCO/ZAVALÍA,
1993) Example: photographs,
• Art Works sculptures, paintings, among
• Musical Works
Literary: They are those that
• Audiovisual Works are expressed by any form of
language such as novels,
• Software or logical support stories, didactic and scientific
• Contracts texts, computer programs
(software), poems, among
• Phonograms, discs or sound recordings. others.
3.3 License agreements:

 What is a license agreement?

In the area of international expansion, the license agreement constitutes an agreement
between two companies from different countries, by means of which one of them, called
a licensing company, grants the other, called the company licensee, the right to use a
patent, A registered trademark, a production process, a trade secret or other intangible
assets in exchange for an initial free payment or a periodical payment called Royalty, or
of both remunerations at the same time.
For the company licensee this contract represents a means of accessing a technology, a
brand or another intangible asset of which it lacks and it would cost a lot of money, time
and effort to develop internally.
The conclusion of a license agreement is a valid possibility of substituting for export,
when transport costs are too expensive for the product in the country of destination, or
when in that country the import barriers or currency constraints are as That prevent the
importation of such a product. But the basic advantage of the licensing company lies in
the fact that granting the license costs nothing,
3.4 According to the Practitioner’s Section Patent License Negotiation:
Best Practices reading, answer the following:
• Define the following concepts related to the phase Preparing to
TEAM: In many
that the deal team meet and reach an
negotiations both parties will understanding of the business motivation
have a deal team. The deal for the deal and the responsibilities and
team will conduct due role of each team member during the
diligence and negotiate the process (e.g., spokesperson, technology
license. A deal team will review, business evaluation, record
generally include a Business keeping). In preparing for the negotiation,
Development Executive; a the deal team should identify, assess and
Scientific/Technical Expert; a prioritize the interests of their client. Client
Decision Maker; and a interests will be both tangible (e.g., longer
Licensing Attorney. The terms, higher royalty rates, greater
scientific and legal roles may minimum guarantees) and intangible (e.g.,
be filled by multiple team building a trusting relationship, maximizing
members. licensor’s reputation, high quality product
or service, creative commitment).

TERM SHEET: It is often helpful for parties to exchange a term sheet prior to the initial negotiation meeting. The
term sheet typically covers the major issues in a potential deal in outline form, including: the licensed product
or process; licensed territory; license fee and royalty; technical information and training required to develop and
manufacture, sell and service the licensed product, and who will be responsible for same; sales and service
support; degree of exclusivity, and duration of the license. The process of creating this document will help team
members understand and focus on the overall objectives of the agreement and avoid unfavorable terms.
Additionally, the document enables each party to understand their team’s basic position from the start, avoiding
potential misunderstandings as the negotiation proceeds.
DEADLINES: Establishing preset any negotiation, a nondisclosure
deadlines for each of the major agreement can provide security for both
steps in the negotiation process is parties to maximize information
important because it forces the transfer. Some key terms include license
other party to reveal its true and scope, enforcement rights, the
intentions and interests in the financial arrangement, additional patent
licensing agreement. Parties not prosecution and maintenance costs,
committed to reaching an ownership of improvements, liability,
agreement will not meet deadline indemnification, and warranties and
requirements, enabling the other representations. A Joint Privilege
party to cut its losses and look Agreement will also be necessary if the
elsewhere for a potential licensing parties intend to discuss legal opinions
partner and avoid waiving the attorney-client
• Which are the six steps to take into account in the phaseprivilege.
Major steps in the negotiation process for which preset deadlines may be set include:

Valuation Developm Exclusivity Rights to

Proprietary Payment
approache ental stage and field of improveme
position. terms.
s. of use. nts.
4. Identifying the technology innovation that was developed, If you were the owner of
this technology, and you were interested in protecting it, in order to be
commercialized, What kind of protection should be applied: patent or copyrights?
Explain the reasons according to the contents studied.
¡Cox (África)

iCow is an agricultural information platform for small farmers. With this service is controlled the fertility of
cows used by 45,000 farmers, which at the stroke of SMS have managed to increase the production of milk in
900 liters per year, according to a study of Green dreams, developer of this software.

Under the current international practice, the software is regulated by copyright law.

With regard to the protection of software, or computer programs, in accordance with the Andean Decision
351 of 1993, it is protected through the copyright regime. This means, among other things, that the code used
for the elaboration of the application or the software is protected by law from the moment of its creation,
however, it is recommended to make a register before the National Directorate of Copyright for purposes
Declarative or evidentiary, as a precaution in the event of eventual conflicts or infringements.

It would also be possible to analyze if there are other elements of the application, such as sounds or music,
characters, dialogues, drawings or photographs that have been created for the application or software and
that must be protected through copyright and backed up to Through their respective register.
• Cow (Africa): A mobile phone based agricultural information platform for small holder farmers
developed to solve the problem of permanent access to verified valuable agricultural content.
Taken from:

• Giordano-Coltart*, J., Calkins, C. (May 1, 2009). Practitioner’s Section Patent License

Negotiation: Best Practices. Journal of Business Chemistry.  Retrieved from:

• (Software Development and Intellectual Property Rights pages 133 to 135) Chen, Y.,

Bharadwaj, A., & Goh, K. Y. (2017). An Empirical Analysis of Intellectual Property Rights Sharing
in Software Development Outsourcing. MIS Quarterly, 41(1). Retrieved from:
• Lichtenthaler, U. (2007). The drivers of technology licensing: An industry comparison.
California management review,49(4). Retrieved from:

• Medina, D. R. (1992). Industrial and intellectual property Law (No. 73). National Autonomous
University of Mexico, Institute of Legal Research.