emmtrix Technologies: Patent Negotiations in High Tech Academic Spinoffs

In May 2016, three scientists from Germany's Karlsruhe Institute of Technology were preparing for a meeting with several managers from the institute's technology transfer department. The three scientists were planning to commercialize a new technology they had created, and hoped to use their invention to launch a new company as a spinoff from their work at the institute. However, because the scientists had created the technology while working at the institute, the technology was legally owned by the institute. The focus of their meeting with the institute's management was (1) to plan for the protection of their invention by registering relevant patents and (2) to discuss the terms for a suitable agreement between both parties. The scientists wanted to clarify how they might be able to use the technology to launch their spinoff company. Specifically, they were eager to determine their rights to the patents that would be registered for their intellectual property. They hoped the meeting would clarify any conflicts between the interests of the scientists and those of the university, and would determine the party responsible for costs related to protecting the intellectual property.

This case is suitable for undergraduate- and graduate-level courses on negotiation, intellectual property management, and patent management, especially in an entrepreneurial setting or in a high-technology context. After working through the case and assignment questions, students will be able to<ul><li>understand the principles, functions, and challenges of an academic spinoff in a high-technology context;</li><li>discuss the opportunities and challenges involved in appropriating an invention and understand how to use general knowledge sources in consideration of patent registration;</li><li>discuss negotiation strategies, particularly in respect to areas of conflicting interests, and how to best profit from a proprietary invention; and</li><li>recognize the key drivers that hamper the successful use of patents and how to manage these challenges.</li></ul>

• start-up
• patent valuation
• intellectual property
• university spin-off
• entrepreneurship
• venture creation
• negotiation