University Technology Transfer and Licensing Agreements
Determining Type of Transfer Agreement to Use, Structuring Key Provisions, Overcoming Unique Challenges
Recording of a 90-minute premium CLE webinar with Q&A
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.
Outline
- Different types of tech transfer agreements: pros and cons
- Sponsored research agreements
- Technology licenses
- Options to grant licenses
- Material transfer agreements
- Key terms
- Royalty rates
- Change of control terms/assignment
- Commercialization
- Buyouts
- Publication review
- Unique challenges when dealing with a university
- Impact of government funding
- IP policies
- 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
David Day
Executive Director
Southeast BioInvestors Forum
Mr. Day is the former Assistant Vice President for Technology Transfer at the University of Floriday. He accepted the... | Read More
Mr. Day is the former Assistant Vice President for Technology Transfer at the University of Floriday. He accepted the role of Executive Director of the Southeastern BIO Investment and Partnering Forum on June 1 2017. Southeast BIO (SEBIO)'s mission is to foster the growth of the life sciences industry in the Southeastern United States by promoting entrepreneurship and bringing together the key stakeholders active in the development of the industry. Mr. Day joined the University of Florida’s Office of Technology Licensing as Director in 2001 and retired as Assistant Vice President. He oversaw the commercialization efforts for UF through licensing, incubation and other related activities. Before coming to the UF, from 1994-2001, Mr. Day was the Director of the University of Alabama in Birmingham Research Foundation.
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Wendy Zimbone
Managing Partner
Talem IP
Ms. Zimbone specializes in IP licensing, IP strategy, and contract negotiations. She joined Talem from the University... | Read More
Ms. Zimbone specializes in IP licensing, IP strategy, and contract negotiations. She joined Talem from the University of Florida where she was the Assistant Director of Engineering and Software Licensing, managing approximately 400 intellectual property cases, an extensive patent budget, and negotiated dozens of license agreements each year. Ms. Zimbone’s practice is focused on the importance of intellectual property in overall business strategy and technology commercialization. She is actively involved in the Association of University Technology Managers (AUTM) as a member of the AUTM software licensing committee and a speaker at AUTM events and webinars.
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