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
www.sisvel.comwww.sisvel.com
www.sisvel.comwww.sisvel.com
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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3
The Significance of Intangible Assets
Components of S&P500 companies’ Assetts
Source: Ocean Tomo 2010
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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
4
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March 2011
Sisvel’s Global Presence
5
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
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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
6
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March 2011
The Increasing Globalization of Licensing:
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
7
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March 2011
The Increasing Globalization of Licensing:
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
The Increasing Globalization of Licensing:
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
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
www.sisvel.comwww.sisvel.com