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 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.
Outline
- Different types of tech transfer agreements: pros and cons
- Sponsored research agreements
- Technology licenses
- Options to grant licenses
- Material transfer agreements
- Key terms
- Royalty rates
- Change of control terms/assignment
- Commercialization
- Buyouts
- Publication review
- Unique challenges when dealing with a university
- Impact of government funding
- IP policies
- 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
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
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.
CloseSusan M. Zerull
Counsel
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
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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