Www.sisvel.com March 2011 Licensing and tech transfer: making the most out of your patents London – April 5, 2011 Giustino de Sanctis CEO SISVEL INTERNATIONAL

www.sisvel.comwww.sisvel.com

March 2011

Licensing and tech transfer:

making the most out of your patents

London – April 5, 2011

Giustino de Sanctis

CEOSISVEL INTERNATIONAL

SA



March 2011

Success for New Technologies Requires Interoperability

Interoperability needs Standardization, Possibly Worldwide

Standardized Technologies are the Result of the Contribution of Many Parties and

are Covered by Many Patents

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March 2011


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The Significance of Intangible Assets

Components of S&P500 companies’ Assetts

Source: Ocean Tomo 2010


March 2011

The Increasing Globalization of Licensing

• The world is becoming smaller and successful standards are now adopted worldwide

• Licensing has always been an international business, but never as much as today

• Global presence is a must for properly managing licensing programs

• Understanding local culture is also critival to address and resolve problems

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March 2011

Sisvel’s Global Presence

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SISVEL Japan K.K.Tokyo, Japan

SISVEL Germany GmbHSISVEL Germany GmbH

Stuttgart, GermanyStuttgart, Germany

Edico, S.r.l.Edico, S.r.l.

Rome, ItalyRome, ItalySISVEL Technology S.r.l.SISVEL Technology S.r.l.

None, ItalyNone, Italy

SISVEL International S.A.SISVEL International S.A.

LuxembourgLuxembourg

SISVEL (Hong Kong) Ltd.SISVEL (Hong Kong) Ltd.

Hong KongHong Kong

SISVEL S.p.A.SISVEL S.p.A.

None, ItalyNone, Italy

SISVEL US, Inc.SISVEL US, Inc.

Audio MPEG, Inc.Audio MPEG, Inc.

Alexandria, VAAlexandria, VA


March 2011

The Increasing Globalization of Licensing:

Tax Considerations• Consider differences both in tax treaties and in

local taxation when deciding where to locate your licensing activities

• Using the most efficient jurisdiction can noticeably reduce overall taxation burden

• However, don’t limit analysis to tax efficency, also consider administrative burdon associated with any specific structure

• Global presence greatly helpful in efficently managing licensing programs

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March 2011


Emerging Markets• Licensing is a global business, but never

underestimate the importance of local culture

• However, don’t let local culture undermine the fundamentals of your licensing program

• Avoid discrimination at all costs

• Almost nothing can be truly kept confidetial, and in most emerging countries the exchange of information among companies is the rule rather than the exception

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March 2011


Antitrust Considerations• Antitrust has become the defense du jour

against licensor – it is often being used just as any other legal tool in litigation

• Be aware of antitrust rules:

– Make sure to ask for advise from antitrust expert very early on, but don’t let the fear paralyze your licensing activities

– Make sure to kept up to date with developments

• Be aware of the increasing attention given to antitrust from country other than US and EU

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March 2011


Take-Away Points

• In our global market it is important to keep in mind tax issues when designing a licensing program

• Think globally act locally, this is true in business, but it is even more relevant in licensing

• Considering antitrust rules before starting a licensing program is always a good idea

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March 2011

Thank You


March 2011

Licensing and tech transfer:

making the most out of your patents

London – April 5, 2011

Giustino de Sanctis

CEOSISVEL INTERNATIONAL

SA


Documents

Www.sisvel.com March 2011 Licensing and tech transfer: making the most out of your patents London – April 5, 2011 Giustino de Sanctis CEO SISVEL INTERNATIONAL