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Negotiating IP Rights in Industry Sponsored Research Agreements

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

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

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Thursday, March 16, 2023

Recorded event now available

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This CLE course will guide counsel on negotiating and structuring industry-sponsored research agreements (SRAs) to allocate IP ownership. The panel will outline the 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.

Practitioners face 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 critical 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 principal issues:

  • What are the primary considerations for counsel when negotiating the SRA?
  • What are best practices for addressing IP ownership and rights in an SRA?
  • What challenges do multiple licenses create, and how can counsel overcome those challenges?

Faculty

Cubert, Jeremy
Jeremy A. Cubert
Senior Assistant General Counsel – IP Transactions & Technology Integration
Elanco Animal Health

With over 22 years of experience in patent law with an emphasis in life sciences, Mr. Cubert assists companies in all...  |  Read More

Morton, Jeffrey
Jeffrey D. Morton, Ph.D.
Partner
Procopio Cory Hargreaves & Savitch

Dr. Morton provides strategic intellectual property advice, including patent prosecution, and related transactional...  |  Read More

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