Tech Transfer Central
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When All Else Fails: How, When and Why to Terminate an IP License

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: April 19, 2018

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Price: $197
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No one wants to terminate a license. Sometimes, however, in the face of a licensee’s failure to move a technology forward, it’s the best option available to give your IP a fighting chance to make it to the marketplace. Other precipitating factors may include bankruptcy, breach of contract, or royalty payment disputes.

It’s not a decision you can take lightly — there are many factors at stake, including the risk of souring your relationship with the licensee, who may be a faculty member, student or local corporation in good standing. It’s critical to communicate effectively, while making sure all the proper steps have been taken in accordance with the terms outlined in the agreement.  It’s a sticky situation, but one that your TTO can emerge from with relationships and IP intact if handled correctly.

That’s why Technology Transfer Central’s Distance Learning Division has developed this important program being led by Seema Levy, JD, Assistant Director of Research Initiatives and Risk Management at SUNY’s Stony Brook University: 

When All Else Fails: How, When and Why to Terminate an IP License

This detailed, practical webinar will focus on:

  • Drafting termination clauses with the how’s, when’s and why’s in mind such as:
    • Non-performance
    • IP challenges
    • Bankruptcy
    • Breach of contract
    • Royalty payment issues
  • How to handle post- termination issues:
    • Sublicenses
    • Return of IP, research materials, data, inventory, etc.
  • Mitigating the risks to relationships with faculty, students, and companies when terminating a license

Meet Your Session Leader:

Seema LevySeema Levy, J.D.
Licensing Agreement and Intellectual Property Attorney
Stony Brook University
Office of Technology Licensing and Industry Relations

Seema’s current work is focused on promoting and facilitating the protection and commercialization of university intellectual property.  She works closely with business developers on individual negotiations, implements long-term strategies for managing risk through the creation and refinement of contract templates, and manages the group in charge of protecting university intellectual property through patent prosecution, copyright registration, and trademark registration. Stony Brook University technology ranges from therapeutics, medical devices, and drug discovery research tools to software and other technology related to internet use.  As a result, she has worked with a range of industries on a broad set of issues. 

Her experience at Stony Brook University builds on her litigation background. She is a member of the California, New York and Massachusetts State Bar Associations.

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