Getting to “Yes” in University IP Licensing: Mock Negotiation Workshop
On-Demand Video, DVD, or PDF Transcript
Originally presented: October 25, 2012
One thing is certain when you negotiate a license agreement: The people on the other side of the table know every trick in the book, and they don’t always play nice…
That’s why Technology Transfer Tactics’ Distance Learning Division created this workshop-style program designed to level the playing field by providing you with best practices for handling tough negotiations, as well as balancing the competing interests of your inventors, your university, and the licensee – so you ultimately get to “YES” more easily and with better terms for your organization.
Join two prominent attorneys who have years of experience negotiating licenses on behalf of universities and corporations alike. When you attend this 60-minute session, you’ll walk away with a wealth of negotiating strategies and tactics that will help you secure the best deal for your university’s valuable IP.
Here’s a sneak peek at the program agenda:
- Anatomy of a license agreement
- Common sticking points, and strategies for overcoming them quickly
- How to balance competing interests of the researcher, institution, and the corporate licensee
- Start-ups vs. large corporations: managing risks associated with each type of licensee
- Compliance with federally-sponsored research obligations
- Understanding the licensee’s needs and common objections to university terms
- Using pressure points, and give and take
- Deal breakers you must avoid
- Dealing with different negotiating styles
- Participate in a live “negotiation” of specific term examples
Your Expert Presenters:
Jim Singer is a partner with the Pittsburgh office of Fox Rothschild LLP, a full-service law firm with over 500 attorneys in 16 offices nationwide. He is a registered patent attorney and a member of the firm’s intellectual property practice group, where he helps clients manage issues involving patents, trademarks, copyrights, trade secrets, privacy, and licensing. Mr. Singer’s clients include technology-focused businesses, research institutions, private equity funds, venture capital and angel investors. He works with a diverse array of technologies such as software, mobile electronic devices, document management, energy, health care, robotics, manufacturing, and clean tech. He is also an electrical engineer with practical experience in the energy industry. Mr. Singer also publishes IP Spotlight, a well-known blog that provides news and tips about the business of intellectual property and other intangible assets. Also, for the past three years, Intangible Asset Management magazine named him as one of the world’s top attorneys for both patent prosecution and licensing matters.
Brienne S. Terril is a patent attorney with Fox Rothschild LLP, where she focuses her practice on intellectual property matters, including patent prosecution and litigation across a range of technology areas, including computer security systems, encryption technologies, smart cards and biometric systems. She regularly conducts intellectual property transactional due diligence in an effort help venture capital funds, investors and purchasers understand the risks associated with investment in, or purchase of, companies that provide mobile communication devices, file backup services, insurance management software, computer security systems and healthcare management systems. Additionally, Ms. Terril has experience negotiating and preparing technology transfer and licensing agreements, including purchase agreements, stock purchase agreements, intellectual property assignments, software licensing agreements and security agreements and releases.
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following the program.
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