University Technology Transfer and Licensing Agreements

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

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

Conducted on Tuesday, October 30, 2018

Recorded event now available

or call 1-800-926-7926
Program Materials

This CLE webinar will guide 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.


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.

Technology transfers present financial opportunities, but involve legal risks, 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 critical provisions to address in technology transfer negotiations and guide challenges that often arise in this context.



  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


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


Meeker, Heather
Heather Meeker

O’Melveny & Myers LLP

Ms. Meeker practices in the firm’s Mergers and Acquisitions practice group and is a Founding Portfolio Partner at...  |  Read More

Reed, Christopher
Christopher Reed
Intellectual Property Officer
UC Santa Cruz

Mr. Reed has extensive experience in IP and Licensing agreements at universities, research institutes, and private...  |  Read More

Solberg, Sean
Sean D. Solberg

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

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