University Technology Transfer and Licensing Agreements

Determining Type of Transfer Agreement, Structuring Key Provisions, Overcoming Unique Challenges

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


Conducted on Tuesday, December 5, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to counsel for drafting university technology transfer and licensing agreements. The panel will discuss key clauses in the contracts and best practices for negotiating the agreements and avoiding pitfalls unique to the university context.

Description

University technology transfer and licensing present unique challenges that can trip up counsel not intimately involved in this practice area. Counsel advising private companies that are contemplating technology transfer deals with university faculty or employees need to understand the ins and outs of technology transfers and licenses in the university context.

While technology transfers present financial opportunities, they involve legal risk, such as potential IP infringement or the failure of related services to provide the expected value.

Private companies typically have different goals than the university when contracting technology transfers. Historically, university licensing programs focused on patent rights. However, universities are asserting their copyrights in software along with other IP rights in the technology.

Those involved in the negotiations must beware of potential conflicts of interest with faculty or university employees who, in addition to their university employment, may have a financial interest in the transfer or license.

By understanding the critical elements to include in agreements—and the common pitfalls involved in university technology transfers—counsel can effectively draft and negotiate an agreement in their clients’ best interests.

Listen as our authoritative panel of IP attorneys discusses the different types of technology transfer agreements, examining the pros and cons of each. The panel will also discuss key provisions to address in technology transfer negotiations and provide guidance for challenges that often arise in this context.

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Outline

  1. Different types of tech transfer agreements—pros and cons
    1. Sponsored research agreements
    2. Technology licenses
    3. Options to grant licenses
    4. Material transfer agreements
  2. Key terms
    1. Royalty rates
    2. Change of control terms/assignment
    3. Commercialization
    4. Buyouts
    5. Publication review
  3. Unique challenges when dealing with a university
    1. Impact of government funding
    2. IP policies
    3. Conflicts of interest—faculty

Benefits

The panel will review these and other key issues:

  • Key provisions to include in university technology transfer and licensing agreements
  • Managing unique challenges that arise when contracting with university personnel
  • Tactics to resolve commonly disputed issues during the negotiation of technology transfer and licensing agreements

Faculty

Meeker, Heather
Heather Meeker

Partner
O’Melveny & Myers LLP

Ms. Meeker advises technology clients on IP matters. Her practice focuses on counseling in technology transactions,...  |  Read More

Solberg, Sean
Sean D. Solberg

Shareholder
Davis Brown Koehn Shors & Roberts

Mr. Solberg is Chair of the firm’s Intellectual Property Department. He has counseled a large number of startups,...  |  Read More

Staudt, Mark
Mark Staudt, Ph.D

Licensing Associate, Technology Commercialization
Wisconsin Alumni Research Foundation

Mr. Staudt assists with a very diverse portfolio that includes the Agricultural Biotech and High Tech sectors. He...  |  Read More

Other Formats
— Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include program handouts. To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

48 hours after event

$297

Download

48 hours after event

$297

DVD

10 business days after event

$297 + $9.45 S&H