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Managing Sublicenses to Protect IP Assets and Maximize Revenues for University TTOs

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: May 28, 2014

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Sublicensing continues to be a sticky wicket for tech transfer offices. If not negotiated, managed and audited properly, sublicenses can dilute the overall value of your technology and jeopardize your IP rights. But creating a clear policy that supports negotiations toward sublicensing and nailing down agreeable terms can also mean a stronger royalty stream.

It’s a complex area, and one that many TTOs struggle with both in negotiation and drafting, and particularly after the deal is done, when sublicensees can end up like so many misbehaving  children who won’t listen and won’t follow your rules. From drafting airtight terms and conditions to understanding your auditing rights and recourse for contract breaches, sublicensing is a critical challenge for your TTO. That’s why Technology Transfer Tactics’ Distance Learning Division has partnered with two experts for this one hour program:

Managing Sublicenses to Protect IP Assets
and Maximize Revenues for University TTOs

Please join Nate Ruey, Director with the Risk Advisory Services Group of McGladrey LLP’s Great Lakes office, and George Summerfield, Partner with Stadheim and Grear, for this eye-opening program. They’ll   guide you through the complicated sublicensing maze, and provide dozens of tips, strategies, and tactics for ensuring sublicensing is a boon rather than a boondoggle for your office. Here’s a look at the program’s agenda:

  • Specific language and terms needed to optimize the benefits of sublicensing and minimize the problems
  • Understanding which structure is best for your IP assets:
    • Flat rate royalties
    • Up front payments
    • Sublicense vs assignment
  • Expert tips for negotiating sublicenses
  • Proven monitoring strategies that send a clear message but maintain a positive relationship with the licensee and sublicensees
  • Establishing your audit rights and when to enforce them
  • Litigation: What steps to take when all else fails
  • Tackling pesky gray areas such as the “silent sublicensee” and more…

Your Expert Presenters:

Nate Ruey, Director – Royalty Advisory Services, McGladrey LLP.  Nate specializes in conducting royalty audit investigations on behalf of universities and companies to determine if licensees are paying royalties in accordance with the terms of their license agreement.  Additionally, Nate provides internal control assessments for both licensors and licensees to determine if sufficient royalty reporting processes are in place.  Nate also has experience assisting organizations in completing risk assessments and developing audit plans.  Nate is a member of the Association of University Technology Managers (AUTM) licensing activity survey committee.  Nate is a Certified Public Accountant, Certified in Financial Forensics and Certified Internal Auditor.

George Summerfield, Partner, Stadheim and Grear, has over 20 years of experience in patent litigation. He has litigated scores of cases in district courts and has been lead counsel in over a dozen appeals. Admitted to the Bar in Michigan, his practice in Illinois is limited to matters that are under the jurisdiction of the federal court system.

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CLP and CLE Credits Available
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CLP Credits are also available.


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