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Drafting Improvements Clauses in University IP Licenses

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: June 17, 2015

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Some of the most complex IP rights are the “Improvements” on licensed innovations. Though it is hard to define what qualifies as an improvement, it generally means modifications, additions, updates, enhancements, and developments made to existing IP.

Since the vast majority of university IP still in development, more often than not there will be improvements made before it’s commercialized.  But negotiating improvements rights is muddled with commonly misunderstood terms, complex royalty adjustments, and thorny sublicensing issues just to name a few. Nailing down the terms for improvements early on is a crucial step to protecting your stake in the IP as well as maintaining a harmonious relationship with your licensee.

That’s why Technology Transfer Tactics has partnered with IP law experts Larry Schroepfer, Michael Alder, and David M. Brown to lead this 90-minute webinar that will help you fully understand improvements and arm yourself with solid negotiating and drafting skills to protect your IP:

Drafting Improvements Clauses
in University IP Licenses

Join us as we discuss:

  • Defining improvements
  • Top-notch negotiating tactics
  • Should your improvements clause address IP, know-how, or both?
  • The most misunderstood and often overlooked terms leading to disputes or IP losses
  • Drafting improvements terms:
    • How specific is too specific when it comes to defining terms?
    • Exclusive vs. non-exclusive rights to improvements?
    • Assigning a time frame to improvements rights
    • How to draft royalty adjustments
    • Who pays to register improvements with the patent office?
  • And much more!

PLUS! Hear the invaluable live Q&A portion of the webinar – it’s like getting a bonus legal consultation!

Meet Your Session Leaders:

Larry SchroepferLarry Schroepfer is the founder and principal of Schroepfer Technology Law, a practice devoted to technology and intellectual property transactions. Mr. Schroepfer is a Certified Licensing Professional, and has over twenty years’ experience in the licensing and intellectual property field. He is an active member of several professional associations (including the Licensing Executives Society, AIPLA and the Association of University Technology Managers), and has spoken on numerous occasions on licensing and related matters. 

G. Michael AlderMichael Alder is Director of the Office of Technology Transfer for Brigham Young University, Provo, Utah (www.techtransfer.byu.edu) In 2006 he moved to BYU and retired as a partner with Redmont Venture Partners, Inc. in Birmingham, Alabama and as the Executive Director of the Biotechnology Association of Alabama. Prior to the move he co founded 9 technology based businesses (two have become public companies). Overall Mr. Alder has 45 years of experience in leading technology based start up companies.

David M. BrownDavid M. Brown is Associate Director of the Office of Technology Transfer for Brigham Young University. After six years of commercial law practice, David obtained an MBA in finance, and then began his work in commercializing software technologies. He has been fulltime with BYU’s Tech Transfer office for four years.

 

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