the art of the deal- webinar

The Art Of The Deal

About SecureDocs

•  SecureDocs is a virtual data room for sharing and storing sensi8ve documents both internally and with outside par8es.

Company Basics: •  Founded by the team that created and launched GoToMyPC and

GoToMee>ng

•  Backed by leading technology companies and investors

•  Web-‐based business soDware for financial and legal professionals

About Peter Weinstein, Ph.D, J.D.

Ø  Nearly a decade as a scien>st post Ph.D., including >me at NIH, USAMRIID and as a Sr. Scien>st at ImmuCell

Ø  Former Patent Examiner at the USPTO Ø  Over a decade in private prac>ce as a patent and general civil

li>gator, patent prosecutor and licensing aSorney Ø  Six years at Baxter Healthcare (Sr. Counsel, IP) Ø  Founder and current CEO of One3 IP Management

About One3 IP Management Ø  One3 IP Management is an intellectual property management company

that acts as your in-‐house IP counsel handling all of your company’s IP, licensing and other legal needs.

Ø  One3 IP views its clients as partners and does not nickel and dime them for

every task, but works with its clients in a cost effec>ve manner that allows One3 IP to learn and stay abreast of its clients current and future business needs and goals.

Ø  One3 IP does not follow the status quo in building its clients value through

the obtainment of a broad patent porZolio and the protec>on of its clients trade secrets, but has developed novel methods that are cost effec>ve and result in an IP porZolio that provides broad protec>on

Form of the Deal

Ø Types of Deals that will be discussed today Ø License Agreement Ø Sales Agreement Ø Collabora>on Agreement Ø Research and Development Agreement

Today’s Goals Ø Provide the steps you may want to consider when preparing to nego>ate and draD a license agreement Ø Not terms as these are deal specific

Ø Provide from my experience some of the do’s and don’t’s of license nego>a>on I have learned over the years

Ø Provide examples of issues created by poor licensing prac>ces

Ø Provide examples of success stories

Deal Prepara>on

Ø Prepara>on is the key to success Ø Iden>fy best partners to accomplish your goal

Ø Iden>fy individuals to contact Ø How to find: Ø Referral Ø LinkedIn Ø Internet search

Deal Prepara>on Ø Determine what you are willing to give up Ø Make sure it meets your business needs Ø Make sure you can live with the term

Ø What are you looking to receive? Ø If you are providing something, what do you want in return? Ø Form of compensa>on Ø Cash, Royalty, Shares, Other

Ø What is a reasonable amount? Ø What will the market bear? Ø Comparables

Deal Prepara>on Ø Timing of nego>a>on-‐ When do you need a deal completed?

Ø Strength of partner Ø Catch them when they are weakest

Ø Complex deals can take 6 months to a year from start to finish Ø Factor in a real >meline to complete

A Deal is Like a Marriage…

It can be great or it can be…

First Contact Ø How do you start? Ø Who is the decision maker? Ø Who makes contact? Ø You Ø Unaffiliated third party

First Contact Ø What do you say? Ø Only as much as need to disclose Ø Too many words can cost you

Ø How to present yourself Ø First impressions Ø Always act professionally

Ø Your presenta>on can affect how you are treated and what you will receive

The Game Begins

Ø How do you start? Ø Term sheet Ø DraD agreement

Ø Who provides the first offer of terms? Ø First shot Ø Cost Ø Experience

Game On

Ø Always nego>ate based on a posi>on of strength Ø Never show weakness

Ø But don’t be obnoxious Ø Don’t be afraid to ask for “too much”

Ø You can always give up territory Ø If possible, let the other side provide the first offer on key terms

Game On

Ø Strategy for nego>a>on and draDing: Ø Never lose your cool Ø Need to stay in control

Ø This is a business deal, emo>on should not enter the equa>on

Ø You are about to enter a “marriage” Ø Respect

Ø Think from the point of view of the other side Ø Listen to what they ask for Ø Listen to what they say Ø This evalua>on should be con>nual

Game On

Ø Strategy for nego>a>on and draDing: Ø Pa>ence Ø Don’t rush to get a deal completed

Ø Communica>on between the par>es Ø Telephone v. Skype v. Face-‐to-‐Face Ø F2F at start and finish

Ø Transfer of informa>on Ø CDA Ø Documents Ø Email v. Dropbox v. SecureDocs

Game On

Ø Strategy for nego>a>on and draDing: Ø Don’t blink Ø The biggest issue is always when to give in on a term Ø You can always concede territory later

Ø The 95 out of a 100 rule Ø Never let on what really maSers to you Ø Lose a baSle but win the war Ø At the same >me making the other side feel like they won

Example # 1 Ø Wanted to outlicense IP rights and Product Line Ø Licensee Ø Lacked consensus Ø Unreasonable expecta>ons Ø Distrust

Ø Licensor Ø Uncommunica>ve

Ø Former Employee trying to blow up deal Ø Reached out to Licensor and agreed to work together

Ø Convinced Licensee one decision maker and term floor Ø Deal exceeded floor and both par>es received what they wanted

Example # 2

Ø Wanted to retain IP rights if collabora>on failed Ø Tough partner to deal with who always asked for too much

Ø Waited un>l partner suffered financial issues Ø Approached partner with license offer for IP Ø Partner agreed Ø Partner wanted to limit scope of IP

Ø Provided partner guarantee of money for a defined period of >me

Ø Obtained all IP rights

Q&A

SecureDocs Virtual Data Room 50 Cas>lian Drive Goleta, CA 93117 Phone: (866) 700-‐7975 [email protected] [email protected] www.securedocs.com @SecureDocsVDR

One3IP Management 1560-‐1 Newbury Road, #327 Newbury Park, CA 91320 Phone: (800) 478-‐2152 [email protected] [email protected] www.one3ip.com @one3ip

the art of the deal- webinar

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