University Technology Transfer and Licensing Agreements
Determining Type of Transfer Agreement to Use, Structuring Key Provisions, Overcoming Unique Challenges
Course Details
- smart_display Format
Live Online with Live Q&A
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Thursday, November 13, 2025
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
60 minutes
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This 60-minute webinar is eligible in most states for 1.0 CLE credits.
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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.
Mr. Garabedian, Ph.D. has extensive experience as an intellectual property attorney in a wide variety of disciplines related to the biological and chemical sciences, including chemistry, biochemistry, organic chemistry, pharmaceuticals, molecular biology, and materials science. He began his professional career as a research biochemist at the UCLA School of Medicine and thereafter at Washington State University where he worked in a variety of biological fields mainly centered around protein structure, function, and characterization. Before joining Cantor Colburn, Mr. Garabedian was a Partner at Wiggin and Dana LLP, advising clients in all aspects of patent law in the chemical and life science arts, including patent application preparation, prosecution, counseling, portfolio management, and legal opinions. His experience extends to trademarks, copyrights, trade secrets, and corporate transactions relating to intellectual property assets, including acquisitions, joint ventures, licensing, and other technology transfer transactions.
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. He also represents academic and healthcare institutions and life sciences companies in technology and research-driven transactions. In addition, Mr. Levy works with companies in the private sector that do business with these institutions. His 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.
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.
I. Different types of tech transfer agreements: pros and cons
A. Sponsored research agreements
B. Technology licenses
C. Options to grant licenses
D. Material transfer agreements
II. Key terms
A. Royalty rates
B. Change of control terms/assignment
C. Commercialization
D. Buyouts
E. Publication review
III. Unique challenges when dealing with a university
A. Impact of government funding
B. IP policies
C. 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
