Negotiating Licensing Agreements with Non-Profit Teaching Hospitals

About the Course: This course provides a solid grounding into the mission of non-profit teaching hospitals. Understanding the fundamental motivations and commitments of non-profit teaching hospitals will enable you to better understand their negotiating positions, objectives and limitations. This course contains insight into the various funding sources–namely, U.S. government funds, foreign government funds, awards/grants from private foundations, philanthropy gifts, corporate sponsors and department funds–in terms of issues such as scope of research restrictiveness and publication rights. The following are among the issues discussed during this highly informative webinar: What do non-profit teaching hospitals seek from companies that want to take an option on the hospital’s inventions? What are the risks that faculty members may circumvent the non-profit teaching hospital? Why do non-profit teaching hospitals insist on directing patent prosecution when pursuing funded research? Who should choose the law firms and pay for the patent prosecution costs? How are milestones negotiated with non-profit teaching hospitals? What are the penalties for a commercializer that fails to meet such milestones? What are some of the risks that arise in connection with negotiating field of use licensing agreements? What are the series of conditions that must be fulfilled for the non-profit teaching hospital to grant an assignment of an agreement? Do non-profit teaching hospitals typically seek assignment fees? What recourse does a non-profit teaching hospital have if an assignee of the agreement fails to commercialize the invention? What are some of the approved uses of a non-profit teaching hospital’s name by the licensee? What are some of the reservation of rights that non-profit teaching hospitals often seek in negotiations? How might faculty members of non-profit teaching hospitals be more constructive in the licensing process? Course Leader: Christopher Geehan, Technology and Innovation Development Office, Children’s Hospital Boston Chris joined the Technology and Innovation Development Office of Children’s Hospital Boston in 2007. He brings his research knowledge and experience in science and his background in law to TIDO. In his role as a Contracts and Intellectual Property Specialist, Chris deals with a number of intellectual property issues and related agreements including the drafting, negotiation and reviewing of exclusive and non-exclusive licenses, collaboration and sponsored research agreements and confidential disclosure agreements. Chris also works closely with outside counsel to protect Children’s Hospital intellectual property via trademarks and patents. Before joining TIDO, Chris worked in a transplant immunology research laboratory at Children’s Hospital Boston working under Dr. David Briscoe studying the role of endothelial / T-cell interactions in allograft rejection and later the role of vascular endothelial growth factor (VEGF) in allograft rejection. While managing a laboratory in the Transplantation Research Center at Children’s Hospital, Chris obtained his J.D. from the Massachusetts School of Law and he is a member of the Massachusetts Bar. Course Length: Approx. 2.0 hours
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