Negotiating Improvement Rights and Joint Inventions

About the Course: Negotiating improvement rights and joint invention agreements can be among the most vexatious aspects of structuring licensing agreements. On the one hand, licensees want to ensure that their investments will not be in vain if the licensor develops a superior technology shortly after signing a license. On the other hand, licensors do not want their licensees to overreach by claiming that all of the licensors’ future inventions are to automatically revert to the licensee. This session discusses a variety of measures to take to reduce the tension associated with negotiating improvement rights and joint invention agreements. The following are among the issues discussed: Crafting definitions of improvements and negotiating aspects to improvements Merits of making improvement rights reciprocal Determining when licensees may sublicense licensor improvements Creating pools of best practices developed by licensor, licensee and other industry players Granting and receiving options on improvements Managing improvements rights when license agreements terminate Defining inventorship in the context of joint inventions Allocating responsibility for patenting and enforcing the joint IP Merits of maintaining inventions as trade secrets Course Leader: Larry Schroepfer, Founder & Principal of LS Technology Law Associates Larry Schroepfer is founder and principal of LS Technology Law Associates. The primary focus of his practice consists of representing companies, universities and research institutions in transactions involving technology and intellectual property, including patent and technology licensing, technology transfer, and a wide range of other technology and intellectual property transactions. A lawyer with over thirty years’ total corporate and commercial experience, Larry has been concentrating in the area of licensing and technology transfer for over fifteen years. He has served as Senior Director with InterDigital Communications, a wireless technology developer; Vice President, Intellectual Property Transactions with BTG International, a UK-based life sciences company, and Director of Licensing with AMP Incorporated (now Tyco Electronics Corporation), an electronic components manufacturer. Larry has also had significant experience in the university-to-industry technology transfer space in both the life sciences and physical sciences sectors.
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