University Technology Transfer and Licensing Agreements

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

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


Wednesday, October 23, 2019

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, September 27, 2019

or call 1-800-926-7926

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.

Description

University technology transfer and licensing present unique challenges that can trip up counsel who aren't often involved in these deals. Counsel advising private companies on 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.

Counsel can draft and negotiate a deal in their clients' best interests by understanding the critical elements to include in agreements--and the common pitfalls involved in university technology transfers.

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.

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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

Zimbone, Wendy
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

Additional faculty
to be announced.

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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

$247

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48 hours after event

$247

DVD

10 business days after event

$247 + $19.45 S&H