Negotiating IP Rights in Industry Sponsored Research Agreements

Structuring Ownership, Licensing, Assignment, Confidentiality, Publication and Use Provisions

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, September 28, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to counsel on negotiating and structuring industry sponsored research agreements (SRAs) to allocate IP ownership. The panel will outline challenges of SRAs with nonprofit organizations and discuss key provisions of the SRA to protect IP rights and avoid unintended consequences.

Description

Companies that fund research typically seek ownership of the research results, including all IP rights, relying on provisions in research agreements to expand their IP rights or specify financial details for future inventions.

Counsel may have to include multiple licenses in SRAs if researchers need access to inventions owned by others. The SRA must also address ownership, licensing rights, confidentiality, rights to future IP, and enforcement of all IP rights.

Counsel faces unique challenges when working with clients involved in SRAs with universities or other nonprofit organizations. Universities and other nonprofits risk jeopardizing the institution’s tax-exempt status when negotiating financial terms for licensing IP to a sponsor under an SRA.

Listen as our authoritative panel of patent attorneys examines considerations and outlines key provisions, offering best practices for negotiating and structuring SRAs. The panel will break down the challenges for counsel involved in contracting with a nonprofit organization and explain the confidentiality obligations of SRAs.

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Outline

  1. SRAs
    1. Considerations
    2. Key provisions
  2. Ownership of IP
  3. Rights to future IP
  4. Licensing
  5. Enforcement

Benefits

The panel will review these and other key issues:

  • What are the key considerations for counsel when negotiating the SRA?
  • What are best practices for addressing IP ownership and rights in an SRA?
  • What challenges are raised by multiple licenses and how can counsel overcome those challenges?

Faculty

Underwood, Robert
Dr. Robert H. Underwood

Partner
McDermott Will & Emery

Dr. Underwood has extensive experience creating U.S. and international intellectual property rights, and identifying...  |  Read More

Wilmot, Matthew
Matthew R. Wilmot

Partner
Stoel Rives

Mr. Wilmot is a Partner in the firm’s Technology and Intellectual Property Group, where he focuses on the...  |  Read More

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