Negotiating Licensing Agreements with University Technology Transfer Offices

About the Course: This session provides insight into virtually every aspect of negotiating with university technology transfer offices. Discussion points range from the overarching goals of a university technology transfer office to standing to sue; from negotiating with spin-off companies to patent prosecution practices; from negotiating know-how rights to negotiating improvement rights; and, from the process of determining what an invention is to how to help faculty members play more constructive roles in the licensing process. The following are among the issues discussed during this webinar: How do universities’ “reservation of rights” clauses impact their ability to license to non-profits and to obtain discounts on their supplies? Why should the use of negatives be avoided when drafting “field of use” provisions? What is the significance of “Consent and Authorization” under the Bayh-Dole Act? Why are university tech transfer officers so insistent on the licensee funding patent filing costs? Other than cash, what is an acceptable form of consideration to tech transfer offices in covering patent costs? What are two common practices for structuring sublicensing provisions? What steps do universities often take to consummate licenses based on patent applications? To what extent do universities share royalty income with undergraduate students? With graduate students? With post-docs? In how much detail should the definitions relating to milestones be negotiated? How aggressive are university technology transfer offices in seeking consideration when they grant options to license their technologies? Why are universities particularly reluctant to license trade secrets? Course Leader: Daniel Broderick, Associate Director for the Office of Technology Transfer, California Institute of Technology Daniel Broderick is responsible for the management and negotiation of intellectual property matters ranging from patent filing decisions, patent prosecution management, licensing negotiations, startup assistance, and maintaining and monitoring license agreements. Dan began his career at Motorola where he designed microprocessor systems, and later joined Rockwell Telecommunications to design telecommunications hardware. He transitioned into technology transfer at Northwestern University, and went on to assist with the start-up of the Technology Transfer Office at the University of California San Diego. He joined Wesley Jessen Vision Care as the Director of Business Development, where he managed a very large intellectual property portfolio and negotiated a wide range of medical device and ocular pharmaceutical business agreements. After Wesley Jessen was purchased by Novartis, Dan became the Director of Business Development at Apovia Inc., a biotechnology company in San Diego that developed recombinant vaccines. Dan has been patent agent since 1995. Dan received his Bachelor of Engineering degree at the University of Michigan, his Master of Science in Electrical Engineering from Northwestern University, and his MBA in finance and marketing from the University of Chicago.
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