Tech Transfer Central
Industry-Sponsored Research Management

Checklist for Drafting and Negotiating Robust Patent License Agreements

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: January 31, 2017

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Executing license agreements is arguably one of the most important activities a TTO engages in. But even the most experienced licensing professional can make missteps during the drafting and negotiation process — missteps that can lead to less than optimal revenues, licensee disputes, and inadequate IP protection. Because licenses have so many moving parts, it’s wise to create a guide or checklist to keep all the important gears moving smoothly and making sure all of your i’s are dotted and your t’s are crossed.

Technology Transfer Tactics’ Distance Learning Division has assembled a top-notch team of presenters to lead this 60-minute, how-to webinar that will take you point-by-point through an airtight checklist that ensure every agreement extracts maximum value and leave minimal room for disagreements later. Our panel will guide you through the 9 most critical areas to examine in every deal — and provide every attendee with a detailed, itemized checklist — so you can be confident you’ve considered every key aspect of each agreement and left nothing on the table.

Please join us for:

Checklist for Drafting and Negotiating Robust Patent License Agreements

Here’s a quick review of the areas the panel will focus on during the program:

  • Internal due diligence:
    • Assignments, ownership and stakeholders
  • License grant:
    • Conditions, rights, scope and limitations
  • Definitions
  • Payments, Reporting and Auditing
  • Sublicensing:
    • Review breaches, limitations and compulsory sublicensing
  • IP Management:
    • Who is the lead party?
    • Who makes final decisions?
    • Challenges, expenses and more…
  • Termination rights:
    • What are the termination triggers?
    • Dispute resolution
  • Risk management
  • Closing the deal and other “housekeeping” tasks

YOU’LL LEAVE WITH A COMPLETE GAME PLAN FOR EVERY DEAL AND A DETAILED, ITEMIZED CHECKLIST YOU CAN REFER TO AGAIN AND AGAIN IN YOUR NEGOTIATION AND DRAFTING

PLUS! Follow along with the original recorded Q&A portion of the program.

Your panel of presenters:

Sadhana ChitaleSadhana Chitale, PhD
Director of Life Sciences/Technology Transfer
New York University

Sadhana joined the Office of Industrial Liaison at New York University in 2001. Her primary area of responsibility is the management of intellectual property and technology transfer matters arising from New York University’s Langone Medical Center and the downtown campus. Sadhana is a Certified Licensing Professional and a registered patent agent. Prior to joining NYU, Sadhana was a Licensing Manager at the Weill Cornell Medical School.  She has been an invited speaker and moderator on technology transfer and intellectual property management matters at local and national meetings.

Scott MacfarlaneScott Macfarlane
Director of Technology Transfer
SUNY Upstate Medical University

Scott joined SUNY Upstate Medical University in 2011 to set up and run its Office of Technology Transfer, which manages, protects, and finds industrial and entrepreneurial partners to commercialize intellectual property created at Upstate’s four colleges and its hospital. Before joining Upstate, Scott spent eleven years at the Cornell Center for Technology Enterprise and Commercialization at Cornell University facilitating the commercialization of Cornell’s intellectual property. Prior to Cornell, Scott worked in business development for a biotechnology startup, a consumer software company, and a startup in 3-D imaging. Scott is a Certified Licensing Professional with an MBA from the Darden School of Business at the University of Virginia.

Colm LawlerColm Lawler
Senior Licensing Manager
Innovation Office at Partners HealthCare (Boston)

Colm joined the Innovation Office at Partners HealthCare (Boston) in April 2016 as a Senior Licensing Manager. His primary area of responsibility is the management and licensing of intellectual property arising from neuroscience research at the Brigham and Women’s Hospital. He has been involved with intellectual property project management and licensing since 1996. Prior to joining Partners, he held positions in a number of organizations, including BioResearch Ireland, Michigan State University, Massachusetts General Hospital and Tufts University.  He is a Certified Licensing Professional and has been an invited speaker and/or moderator on technology transfer, intellectual property management and licensing matters at local, national and international meetings.

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CLP and CLE Credits Available
Please review your State Bar’s policy on distance learning credits prior to submitting the non-refundable application fee. We submit CLE applications (excluding NY, NJ, IL, LA & PA) for an additional $50 (unless otherwise specified upon checkout). Approval times vary per state and cover all attorneys in attendance. Application is not a guarantee of approval and attendance forms must be submitted following the program.

CLP Credits are also available.


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