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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, March 18, 2025

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide counsel on negotiating and structuring industry-sponsored research agreements (SRAs) to allocate IP ownership. The panel will outline the challenges of SRAs with nonprofit organizations and discuss key provisions of the SRA to protect IP rights and avoid unintended consequences.

Faculty

Jeffrey D. Morton
Partner
Haynes & Boone LLP

Mr. Morton’s practice focuses on all aspects of intellectual property law, with a particular focus on patent strategy in the life sciences industry. He has extensive experience in life science technologies ranging from genomics and immunology, through to crop science innovations and gene editing technologies. Mr. Morton regularly advises on intellectual property due diligence, and complex freedom-to-operate issues. In addition to his patent practice, Mr. Morton maintains an active trademark and commercial law practice that is largely focused on developing value for his client’s valuable intellectual property assets.

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Jeremy A. Cubert
Senior Assistant General Counsel – IP Transactions & Technology Integration
Elanco Animal Health

With over 22 years of experience in patent law with an emphasis in life sciences, Mr. Cubert assists companies in all aspects of obtaining and managing their IP portfolios. He has extensive experience in patent prosecution, due diligence and analysis of IP portfolios and counsels clients regarding the acquisition and licensing of IP assets. Mr. Cubert regularly works directly with scientists and professionals at academic institutions, biotechnology companies, and Fortune 500 companies to develop IP development and management plans. Mr. Cubert has been an adjunct professor at the American University Washington College of Law where he taught a course entitled “Intellectual Property Law and Healthcare” and has authored many articles in the area of IP law.

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Description

Companies that fund research typically seek ownership of the research results, including all IP rights, relying on provisions in research agreements to expand their IP rights or specify financial details for future inventions.

Counsel may have to include multiple licenses in SRAs if researchers need access to inventions owned by others. The SRA must also address ownership, licensing rights, confidentiality, rights to future IP, and enforcement of all IP rights.

Practitioners face unique challenges when working with clients involved in SRAs with universities or other nonprofit organizations. Universities and other nonprofits risk jeopardizing the institution's tax-exempt status when negotiating financial terms for licensing IP to a sponsor under an SRA.

Listen as our authoritative panel of patent attorneys examines considerations and outlines critical provisions, offering best practices for negotiating and structuring SRAs. The panel will break down the challenges for counsel involved in contracting with a nonprofit organization and explain the confidentiality obligations of SRAs.

Outline

  1. SRAs
    1. Considerations
    2. Key provisions
  2. Ownership of IP
  3. Rights to future IP
  4. Licensing
  5. Enforcement

Benefits

The panel will review these and other principal issues:

  • What are the primary considerations for counsel when negotiating the SRA?
  • What are best practices for addressing IP ownership and rights in an SRA?
  • What challenges do multiple licenses create, and how can counsel overcome those challenges?