Negotiating IP Rights in Industry Sponsored Research Agreements

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

A live 90-minute CLE webinar with interactive Q&A


Thursday, September 28, 2017 (in 6 days)
1:00pm-2:30pm EDT, 10:00am-11:30am PDT


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.

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

Dr. Robert H. Underwood, Partner
McDermott Will & Emery, Boston

Dr. Underwood has extensive experience creating U.S. and international intellectual property rights, and identifying and evaluating third party IP risks, to help clients achieve business objectives. He assists clients with strategic counseling, patent portfolio development and management, patent prosecution, patentability, non-infringement, invalidity and freedom to operate opinions, due diligence and agreements that involve IP rights. He also assists clients with product planning matters, patent life-cycle management and the acquisition and divestment of IP assets.

Matthew R. Wilmot, Partner
Stoel Rives, Portland, Ore.

Mr. Wilmot is a Partner in the firm’s Technology and Intellectual Property Group, where he focuses on the representation of technology-based companies and clients in other industries having IP assets. His clients include software companies and mobile app developers, as well as companies in the bioscience, and media and content distribution, among others. Mr. Wilmot regularly represents his clients on a broad range of technology and other related transactions both in the U.S. and internationally. He also has a recognized trademark, trade dress, unfair competition, trade secret, copyright, domain name, and IP litigation practice.


Live Webinar

Live Webinar $297.00

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This webinar is eligible for at least 1.5 general CLE credits.

CLE credits are not available for PR.

*In KS, OH, PA, for more than 1 attendee on the connection you must contact Strafford CLE via email or call 1-800-926-7926 ext. 35 prior to the program for special instructions.


Recordings

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Webinar

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Program Materials

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Customer Reviews

Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray

Kohler

Excellent presentation.

Barry Jasilli

CVS Caremark

We were given simple and clear answers to complex questions, lots to work with.

Patrick R. Kelly

Glenn, Feldmann, Darby & Goodlatte

Good materials plus well prepared presenters and a good level of detail.

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Fredrikson & Byron

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Patent Law Advisory Board

Charles S. Baker

Partner

Locke Lord

David S. Bloch

Partner

Winston & Strawn

Irah H. Donner

Partner

Manatt

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick

Partner

Duane Morris

David Segal

Senior IP Counsel

Intel

Astrid R. Spain

Partner

Jones Day

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

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