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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 video webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Tuesday, October 11, 2022

Recorded event now available

or call 1-800-926-7926

This CLE course will guide counsel in drafting university technology transfer and licensing agreements. The panel will discuss key contract clauses 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 who aren't often involved in these deals. Counsel advising private companies on technology transfer deals with university faculty or employees must 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 assert their copyrights in software and other IP rights in the technology.

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

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.



  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


Levy, Seth
Seth D. Levy

Partner; Leader, Intellectual Property Practice; Co-Chair, Life Sciences Practice
Nixon Peabody

Mr. Levy supports tech transfer programs at universities, research institutes and academic medical centers. His...  |  Read More

Zerull, Susan
Susan M. Zerull

Cantor Colburn

Ms. Zerull joined the firm after 25 years as in-house counsel at The Dow Chemical Company, Imation, and 3M. Her...  |  Read More

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