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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, October 11, 2022

  • 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 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.

Faculty

Seth D. Levy
Partner; Leader, Intellectual Property Practice; Co-Chair, Life Sciences Practice
Nixon Peabody LLP

Mr. Levy supports tech transfer programs at universities, research institutes and academic medical centers. His includes patent procurement and portfolio management, coordinating complex research arrangements, negotiating commercial transactions involving IP, resolving related disputes, and coordinating IP enforcement activities. Mr. Levy also advises on the development and expansion of tech transfer programs; the operation of incubators, accelerators, and venture funds; and the revision of institutional IP policies to reflect contemporary tech transfer issues. Mr. Levy also represents academic and healthcare institutions and life sciences companies in technology and research-driven transactions. In addition, he works with companies in the private sector that do business with these institutions. Mr. Levy’s work in this area includes drafting and negotiating license agreements, joint research and development agreements, clinical trial agreements, sponsored research agreements, consulting agreements, and a range of other corporate transactions to effectuate deals in the arenas of research, healthcare, and IP.

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Susan M. Zerull
Counsel
Cantor Colburn LLP

Ms. Zerull joined the firm after 25 years as in-house counsel at The Dow Chemical Company, Imation, and 3M. Her practice concentrates on patent procurement, developing intellectual property strategies, and complex intellectual property transactions. She brings a pragmatic, business focused, and global view to her practice. Ms. Zerull’s technical areas of expertise include polymers, electronic materials and devices, photovoltaics, solar modules, small molecules, chemical formulations, chemical processes, and pharmaceuticals.

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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 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.

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