Tech Transfer Central
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Accelerate Deal Flow with “Express-Style” Licensing Methods

Format: MP3, CD, or PDF Transcript
Originally presented: January 19, 2011

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Express-style licensing has been making headlines — and headway — in recent months. At the University of Hawaii, the University of North Carolina and Carnegie Mellon just to name a few, the push is on to make the licensing process faster and more industry-friendly.

These organizations are using standardized agreements to dramatically speed licensing and start-up formation, and their approach is garnering heavy industry interest, more deals, more faculty spinouts, and better corporate relationships. But it’s not without some trade-offs, and trouble can lurk in seemingly simple contract language and key drafting omissions.

Take just one hour to attend this important audioconference, where you’ll review examples of express licenses and take an in-depth look at the Mahale Method — the University of Hawaii’s express license that is short, simple and successful.

Accelerate Deal Flow with
“Express-Style” Licensing Methods

We’ve secured two experts with hands-on experience in creating license agreements that drastically cut drafting and negotiating time while achieving the same- or in some cases even more lucrative results. Lee Marvin Taylor from the University of Hawaii — creator of the Mahale Method — is on board to talk specifically about the UH’s licensing model and why it works so well:

  1. Why an issue fee is mandatory
  2. Why a license maintenance fee is mandatory
  3. How using the same royalty rate leads to very different outcomes
  4. Why UH takes equity in spinouts
  5. Why that equity is not taken until after the first round of financing above $2M

You’ll also hear from Professor Theodore Hagelin, JD, LLM, of the New York State Science & Technology Law Center, who’ll provide an analytic review of additional “express license” examples and the pros and cons of each. He’ll also discuss:

  1. Two paradigms of university technology transfer
  2. Where express license agreements fit within these paradigms
  3. A business plan’s role in express license agreements
  4. How faculty inventors factor in express license agreements and negotiations
  5. License payments, patent costs, royalties, and liquidation event fees

Your Expert Presenters:

Lee Marvin Taylor, JD, LLM, is a technology licensing associate at the University of Hawaii’s Office of Technology Transfer and Economic Development (OTTED) and developer of the Mahale Method licensing model. Prior to working at OTTED, Mr. Taylor identified a promising UH technology that formed the basis of his entry in a university business plan competition.  This technology won first prize and was incorporated as Adama Materials; the company recently closed a Series A funding round of $4.75M. In his current role, Mr. Taylor initiated OTTED’s tri-annual technology showcase that features promising university technology for the local business community.  Mr. Taylor regularly consults on IP matters with various stakeholders located in India, Saudi Arabia and the U.S. mainland.  He earned his LLM in Intellectual Property from the George Washington School of Law, and during that time he worked at the International Trade Commission’s Office of Unfair Import Investigations which help prevent infringing products from entering the U.S. market.  He will complete his MBA focused on technology start-ups in May of 2011.

Ted Hagelin, JD, LLM, is the Crandall Melvin Professor of Law, and founder and director of the Technology Commercialization Research Center at Syracuse University College of Law.  He is currently serving as the Director of the New York State Science & Technology Law Center, a statewide center funded by the New York State Foundation for Science, Technology and Innovation.  Professor Hagelin has supervised over one hundred research projects in his role as director of the Technology Commercialization Research Center.  These research projects have been undertaken on behalf of universities, federal laboratories, non-profit research centers, and large, medium, small and start-up companies. Professor Hagelin teaches in the fields of intellectual property and technology commercialization law.  His research and writing focus on the areas of technology commercialization strategy, patent valuation, and intellectual property policy.  Professor Hagelin has been granted two patents on a Method to Value Intellectual Property. More information on the New York State Science & Technology Law Center can be found at http://nysstlc.syr.edu/.

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