Licensing university technologies to academic start-ups is a tricky business, often involving a whole range of considerations not encountered with typical corporate licensees. Equity is often taken in lieu of royalties and up-fronts, hoping to allow the fledgling company some breathing room to use its cash for growth and development. How that equity and other factors such as milestones, equity dilution, clawback provisions, board participation, use of university facilities and equipment, cost sharing, patent protection, and other key contractual issues are structured is all over the map, often defined by the unique nature of each spinout and its management team. Also muddying the waters are other sensitive issues such as COI concerns, protecting critical researcher relationships, corporate and tax structure, level of TTO and university support, use of interns and grad students, and many others.
To help you understand the complexities of start-up licensing and consider a range of best practices and options — and ultimately craft agreements that both encourage start-up creation and protect the university and its IP — Technology Transfer Tactics’ Distance Learning Division has secured two top experts to guide you, sharing their proven strategies and tactics in this hands-on webinar workshop:
Drafting Win-Win Start-Up Licenses:
An Interactive Workshop
This 90-minute, workshop-style program that will cover:
- Startup structures (corporation or LLC) and Significance for Equity license terms
- Key differences and considerations in licensing to academic start-ups
- Understand the various types of start-ups and how they impact license structure
- Strategic partner funded
- Bootstrapped start-ups
- Vanity start-ups
- Use of equity as consideration for license
- How much equity to ask for and expect
- How much equity? Calculating university share based on IP’s role in company viability
- Common drafting errors in equity provisions of start-up licenses
- What it is
- How to protect the institution
- How not to protect the institution
- Finance Issues
- Interaction of the license with venture capital financing
- Rights of participation in future financing
- Prohibition on challenges to patent validity
- Proceeds from infringement litigation
- Restriction on bringing the institution into infringement litigation / legal “standing”
- Field limitations and commercialization diligence requirements in the start-up versus established company context
- Milestones and milestone payments
- Board observer rights
- Registration rights – what are they and how should the license define them?
- Restrictions on assignment
- Flexibility on terms and conditions
Your Expert Panel of Presenters:
Stephen P. Rothman, Principal, Rothman and Company, PA — The University Tech Transfer Law Firm. Mr. Rothman has a broad transactional legal practice with an emphasis on representing start-up companies formed to commercialize inventions from universities and research institutes. He has extensive experience in venture capital and angel financing, joint ventures, mergers and acquisitions, entity formation and other business law matters, as well as intellectual property licensing and sponsored research agreements. He often serves as a mentor to university faculty and other entrepreneurs in the areas of business plan development, executive team assembly and identification of suitable financing sources.
Sean Brady, Rothman and Company, PA — The University Tech Transfer Law Firm. Mr. Brady has a transactional legal practice with a focus on representing start-up companies licensing intellectual property from universities. He has experience in counseling start-ups on a number of strategic legal and business issues including licensing and raising venture capital financing.