3~ 3. How MUCH IS IT W ORTH?

3. How MUCH IS IT W ORTH?

Unlike tangible property, which has well-recognized means

of establishing a value and thus a price, there is no easy way
to determine the value of intangibles. However, as with any
other transaction, a price must be established and several
methods, mostly borrowed from the world of tangible
property, have been developed and successfully applied to
facilitate this task.

Valuing technology becomes important when the potential licensee

has:
• recognized the need for new technology and identified the
most appropriate technology;
• identified the potential licensor; and
• decided that a license arrangement is the most appropriate
business strategy.

At this stage, three issues or questions become relevant:

• How much can the company afford to pay for the right to use
the licensor's technology?
• In what ways should the licensee pay the licensor? and
• How much should the licensee pay the licensor?

The first of these issues - what the company can afford - is of crucial
importance. A prudent licensee cannot base decisions on the theoretical
value of technology but rather on whether it will enhance his ability to
gain revenues." If the price of the new technology, when added to the
cost of the product, results in a cost of goods that is higher than what
the market will bear, the licensee will lose money and the license
negotiation will have been a wasted or harmful exercise. Preparation for

6. Increase in revenue is not always the sole objective of entering into a licensing agreement.
There are ot her gains, which are not easily quantifiable such as improved image and greater visibility.
This is particularly true in the case of trademark licensing and character merchandising but also
evident where companies refer to the use of patented technologies to enhance the brand image of
their products as being "high-tech .•
 3. How MUCH IS IT W ORTH? :n

a licensing negotiation means determining whether there are adequate

financial resources to meet all the expenses involved in acquiring and
utilizing the licensor's technology and to further realize a profit when
the technology or product is ultimately marketed.

Ultimately, the objective is that both the licensor and licensee should
share in the profits associated with the use of the technology in a fair
and reasonable manner.

VALUATION OF TECHNOLOGY

Valuation is a difficult exercise and often a subjective one. An owner

of an asset, a potential purchaser, a financier and an insurer, will each
value a fixed asset differently, even though it is an identifiable asset
which is measured in a common currency. Traditionally, the valuation
of assets reflected their historical cost, as adjusted by depreciation,
and their value was directly related to their expected profitability. In
recent years, however, this link is no longer automatically applicable,
as "new economy" companies generate earnings seemingly
unrelated to their fixed assets. This is happening, primarily, because of
their use of intangible assets and, in particular, technology. lt thus
follows that valuing intangible assets is even more difficult, and even
more subjective!

Even so, several methods can be used to value technology. 7 Given that
valuation may be subjective and depends on the data that is used in
the valuation model, the valuations derived from each of the criteria
will not be the same. However, they should provide some guidance by
establishing certain parameters within which the financial
arrangements could be negotiated, including not only the amounts,
but also the ways in which payments are to be made.

7. See Deborah Hylton and David Bradin, "Intellectual Property of Biotech Companies: A valuation
Perspective", April 2002, http:!lfaru/ty.fuqua.duke.edutcourses/mba/2001-2002/term41hfthmgmt491/
Files!DUKE_LEauRE.doc, Jeffrey H. Matsuura, "An Overview of Intellectual Property and Intangible
Asset valuation Models", Research Management Review, Volume 14, Number 1, Spring 2004, page 33
and references cited in http:l!wvvw.wipo.inlfsmelen!documentstva/uationdocs!index.htm.
3~ 3. How M UCH IS IT W ORTH?

Cost Approach

The licensor~ investment in the technology is represented by those

costs associated with developing, protecting and commercializing the
technology. These expenditures are known to the licensor and can
reasonably be estimated by the potential licensee. They represent the
base, or minimum that the licensor will want to recover, with interest.
If however, for example, the license is non-exclusives and/or there are
separate territorial rights, the licensee could argue that the
recoupment of the licensor's investment should be borne by more
than one party. The potential licensee might also argue that there
were some unproductive research expenditures, which should not be
taken into account. The potential licensee might argue as well that its
investment in commercializing the technology should receive some
credit or acknowledgement. Indeed. the potential licensee may argue
that the cost incurred by the would-be licensor is irrelevant to him. He
is only interested in the value of the technology to his business, not
its cost to an unrelated party. Also, the licensor will not often reveal
the true cost of the technology development and the potential
licensee has no way to confirm that cost. In the end, the goal should
be for both parties to have a realistic understanding of the licensor's
investment and its relevance to the payments to be made to the
licensor by the licensee.

Sometimes the cost approach is used to estimate all the costs that
would be incurred if the licensee were to obtain, from a different
source, technology that could deliver an identified process or product.
This might be through a third party with competing but non-infringing
technology. The cost approach is also used to establish costs that
would be involved in the creation of similar technology taking into
account the prices and rates of payment on the date of valuation (cost
of technology reproduction/reinstatement). In these and other
appropriate situations, the licensee would estimate the t ime and the
cost of acquiring or developing alternative technology. The licensee is
effectively determining the cost of the next best alternative, and this,

8. See further Chapter 4, • 01erviw of a Ucensing Agreement.·

 3. How MUCH IS IT W ORTH? :35

where possible, can be a useful measure of the importance and value

of the licensor's technology to the licensee. This is less a valuation
calculation and more a negotiation strategy related to what options
the potential licensee has for alternative business partners if the
potential licensor will not negotiate favorably on the financial terms.

Income Approach

Successful technology licensing means, for the licensee, increased

profits because of the use of the intellectual property protected
technology. The income approach to valuation involves making
educated guesses (or more precise measures, if possible) as to the
amount of income that the new technology will generate. The issue
then is to determine the respective shares the parties should each have
of the benefits and find a royalty formula that matches that calculation.

Some licensing professionals start their valuation calculations with a

"rule of thumb", according to which the licensor should receive
around one quarter to one third of the benefits accruing to the
licensee, often referred to as the "25% rule. " 9 This rule has the
advantage of being well known and widely quoted, and so is a
common starting point for many licensors and licensees. lt can then
be varied by the parties in negotiation for any number of equitable
and logical reasons. Often these will include the issue of risk and such
factors as the technology's stage of development (embryonic to fully
developed), the capital investment required, the content and strength
of the intellectual property package and an analysis of the market.

By way of illustration, if a new product is expected to sell for

US$1 ,500, and all costs total US$750, there will be an operating profit
of US$750. Of this, 25% is US$187.50. This is the amount, according
to the "rule", the licensor should receive, and could be a starting
point for further negotiation having regard to the above risks and
royalty variables and any other relevant factors.

9. See Robert Goldscheider, John Jarosz and Carla Mulhern, • use of the 25 Per Cent Rule In
Valuing lP", Les Nouvel/es, December 2002, page 123.
3~ 3 . How M UCH IS IT W ORTH?

lt may be that one party does not wish to pay or receive running
royalties for the term of the agreement, but wants only a lump sum
(perhaps in time-based or event-based installments), and therefore a
fully-paid-up license.

In this event, the next step would be to prepare a statement identifying

for each year all the cash inflows and outflows, for the term of the
agreement (n), and to then apply the formula 1 I (1 + r/1 00)" and
calculate the lump sum or Net Present Value (NPV). This calculation
requires the selection of a discount rate, r, which is the cost of capital
adjusted for risk and so effectively incorporates or reflects all the risks.
The NPV establishes the present value of future income streams
expected from the use of the technology under consideration.
Obviously, this method is only as good as the precision of the data that
is put into it. In some negotiations, one or both parties will hire
accountants to run various scenarios of possible return and discount
depending on certain scenarios. This may be simple or complex,
involving more elaborate valuation technologies such as "real options"
or "Monte Carlo simulations." In many cases, however, the parties
who are in business will have a well-developed practical sense of the
risk and possible returns from the licensed-in technology.

lt should be noted that the NPV (also termed the Discounted Cash
Flow or DCF) analysis is relevant to any issue where time and money
are relevant factors. lt can thus be a tool of wide application.

Market Approach

Sellers and purchasers of real estate and used cars know, or can readily
ascertain, what other parties have agreed for similar houses in the same
area, or for the same make and year of car. lt follows that comparable
market transactions are a convenient and useful way of determining the
value of an asset in anticipation of negotiating a purchase or sale.

The same approach is beneficial in licensing, though perhaps not as

useful because there will seldom be identical technology and
intellectual property packages. In addition, the commercial details of
 3. How MUCH IS IT W ORTH? :37

an agreement will not be ascertainable where they are considered by

the parties to be competitor-sensitive. This is more likely to be a
problem where there is an exclusive worldwide license. Where it is
non-exclusive, or is exclusive in different geographical territories,
subsequent licensees will often know of, or at least have a good idea
of, other licensees' terms and conditions. Furthermore, non-exclusive
licensees sometimes require that details of subsequent licenses be
provided, or might require, through a "Most Favored Licensee" right,
that a more favorable subsequent deal be made available to them as
the earlier licensee. In practice, these may be hard to use and enforce
as agreements are often confidential.

To some extent, it is useful to look at existing royalty ranges in certain

types of licensing transactions. These may provide "evidence" in
arguing for a particular rate in a negotiation, and rnay also provide
useful guidelines. However, licenses are notoriously difficult to
compare because the nature of the technology and the scope of the
license will have a significant effect on the value of the license. A very
broad exclusive license to make, use and sell all the rights to all patents
in a certain technology will have a very different value than a limited
non-exclusive license to exploit a technology in a narrow field of use.

Still, information on other license royalties can be interesting and

shows a wide range of royalty rates. An early survey by the
Biotechnology Licensing Committee of the Licensing Executives
Society (LES) reported that the following royalty ranges for non-
exclusive licenses were considered representative for:

• Research reagents (e.g. expression vector. cell culture), 1 - 5%

of net sales.
• Diagnostic products (e.g. monoclonal antibodies, DNA probes),
1 - 5% of net sales.
• Therapeutic products (e.g. monoclonal antibodies), 5 - 10%
of net sales.
• Vaccines, 5 - 1 0% of net sales.
• Animal health products, 3 - 6% of net sales.
• Plant/agriculture products, 3 - 5% of net sales.
~ 3. How M UCH IS IT WORTH?

The Licensing Economic Review of September 1990 reported that, for

early-stage recombinant pharmaceuticals, royalty rates of 7-1 0%
applied for exclusive arrangements and 3-4% for non-exclusive.
Following regulatory approval, the rates for exclusive licenses were
12-15% and for non-exclusive licenses they were S-8% of net sales.

M. Yamasaki in /es Nouvelles, September, 1996, reported on average

royalty rates reflecting both the R&D stage at the time the license is signed
and the situation of the parties to the agreement. Thus, where a small
biotech company licensed-in from a research institution or a university
and, after further development, licensed-out to a major pharmaceutical
company the added value was reflected in increased royalty rates:

R & D Stage Bio/Uni Pharma/Bio

Discovery 3% 7%
Lead molecule 4-5% 9%
Pre-clinical 6-7% 10%
Phase 2-3 15%

These figures alone, however, do not show the full picture of the
economic value of the deals and it is a frequent licensing pitfall to
think only in terms of percentages and numbers. Most often, the
actual terms of license agreements, including what may have been
paid in the form of lump sum payments and other incentives that may
have been agreed to, are unknown. Yet, they affect substantially the
royalty rates agreed to. lt is, therefore, difficult to assess what a given
percentage royalty actually means.

In summary, the usefulness of the market approach is often very limited.

Generalizations, surveys and industry norms at least provide a starting point.
What can be much more useful, however, is knowledge of a comparable
licensing arrangement in the same industry which could provide another
basis or check for a particular valuation of a particular technology.
 3. How MUCH IS IT W ORTH? :39

Other Criteria

Tom Arnold and Tim Headley, in "Factors in Pricing License" in /es

Nouvel!es, March, 1987, compiled a checklist of 100 important
considerations in setting the value of technology licenses. These are
listed under the following nine headings:
• Intrinsic Quality (e.g., significance of technology and stage of
development)
• Protection (e.g., scope and enforceability)
• Market Considerations (e.g., size and share)
• Competitive Considerations (e.g., third party)
• Ucensee Values (e.g., capital, research and marketing)
• Financial Considerations (e.g., profit margins. costs of
enforcement and warranty service)
• Risk (e.g., product liability and patent suits)
• Legal Considerations (e.g., duration of the license rights)
• Government (e.g., local laws on royalty terms and currency
movement).

Royalties have been discussed in patent infringement lawsuits where

courts engage in the task of determining what a correct royalty would
have been in order to determine damages from infringements. The
courts look at many factors and these are useful to consider as a sort
of checklist when examining the value of intellectual property in a
non-infringement situation:

"1. The royalties received by the patentee for the licensing of the
patent in suit, proving or tending to provide an established royalty.
2. The rates paid by the licensee for the use of the other patents
comparable to the patent in suit.
3. The nature and scope of the license as exclusive or non-
exclusive; or as restricted or non-restricted in terms of territory or
with respect to whom the manufactured product may be sold.
4. The licensor's established policy and marketing program to
maintain his patent monopoly by not licensing others to use
the invention or by granting licenses under special conditions
designed to preserve that monopoly.
~ 3 . How M UCH IS IT W ORTH?

5. The commercial relationship between the licensor and licensee,

such as, whether they are competitors in the same territory in
the same line of business; or whether they are inventor and
promoter.
6. The effect of selling the patented specialty in promoting sales of
other products of the licensee; the existing value of the invention
to the licensor as a generator of sales of his non-patented items;
and the extent of such derivative or convoyed sales.
7. The duration of the patent and the term of the license.
8. The established profitability of the product made under the
patent; its commercial success; and its current popularity.
9. The utility and advantages of the patent property over the old
modes or devices, if any, that had been used for working out
similar results.
10. The nature of the patented invention; the character of the
commercial embodiment of it as owned and produced by the
licensor; and the benefits to those who have used the
invention.
11 . The extent to which the infringer has made use of the
invention; and any evidence probative of the value of that use.
12. The portion of the profit or of the selling price that may be
customary in the particular business or in comparable
businesses to allow for the use of the invention or analogous
inventions.
13. The portion of the realizable profit that should be credited to
the invention as distinguished from the non-patented
elements, the manufacturing process, business risks, or
significant features or improvements added by the infringer.
14. The opinion testimony of qualified experts.
15. The amount that a licensor (such as the patentee) and a licensee
(such as the infringer) would have agreed upon (at the time the
infringement began) if both had been reasonably and voluntarily
trying to reach an agreement; that is, the amount which a
prudent licensee - who desired, as a business proposition, to
obtain a license to manufacture and sell a particular article
embodying the patented invention - would have been willing to
pay as a royalty and yet be able to make a reasonable profit and
 3. How MUCH IS IT W ORTH? ~1

which amount would have been acceptable by a prudent

patentee who was willing to grant a license." 10

There is, thus, no limit to the factors that may be relevant to the
valuation of a particular technology. Of course, with so many factors,
many of them will not be important or decisive depending on the
situation. What is important will depend on each party's strategic
objectives and business needs. Thus, if a licensee's need, for example,
is to manufacture successfully the licensed product in the territory,
and, rather than export, to sub-license other manufacturers in
neighboring territories, it will be very important for the licensee to
have exclusivity for the geographic areas of interest and to have the
right to grant sub-licenses. The strategic objectives, and the necessary
rights, will impact on the valuation and the accompanying
negotiations, for both parties.

Concluding Comments

The principal approaches to valuation of technology all have their

limitations, which need to be borne in mind when valuing intangible
assets. Each licensing negotiation is unique and it is difficult to apply
the experiences of others or theoretical rules to the distinct situation
at hand. However, the rules discussed above should provide some
guidance in approaching the question of valuation. Further, it is
advisable that the parties rely on the assistance of experienced
valuation professionals and/or accountants to guide them through the
complexities of a valuation exercise. Finally, a valuation is for the
purpose of negotiating terms and conditions that would be
acceptable to both parties and, as the Chapter on "Negotiating
Guidelines and Tips" makes clear, while it would be nice to get the
deal you deserve, you actually get the deal you negotiate.

10. See Tenney J, of the U.S District Court of New York in Georgia-Pacific Corp. v. U.S. Plywood
Corp., 318 F.Supp. 1116 (1970). See further Roy J. Epstein, "Modeling Patent Damages: Rigorous
and Defensible Calculations", http:I/WNW.royepstein.comlepstein_aip/a_2003_artide_website.pdf
and Roy J. Epstein and Alan J. Marcus, • Economic Analysis of the Reasonable Royalty: Simplification
and Extension of the Georgia-Pacific Factors·, http:ttwww.royepstein.com/epstein-
marcus_jptos.pdf.