Tech Transfer Central
Industry-Sponsored Research Management

Post-License Monitoring and Support: Performance and Revenue Enhancement Strategies (and When All Else Fails How to Pull the Plug and Take Back Your IP)

Format: MP3, CD, or PDF Transcript
Originally presented: December 16, 2009

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Price: $197
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The road from the research lab to a signed license agreement is long. And after all the work is done and the deal is finally inked, it’s understandable for TTO staff to breathe a sigh of relief and cross at least one technology off their list – with many others waiting for attention. However, the work doesn’t stop when the deal closes – unless you don’t mind letting dollars you’re due under the agreement slip through your fingers…

If you don’t have an airtight post-license monitoring procedure in place, you could be losing millions in royalties

That’s why we’ve lined up three leading experts in licensee monitoring for an intensive 90-minute distance learning program:

Post-License Monitoring and Support:
Performance and Revenue Enhancement Strategies

(And When All Else Fails, How to Pull the Plug and Take Back Your IP!)

While most licensees act in good faith and strive to abide by their contractual obligations, some – according to several studies the majority — intentionally or not end up breaching their contract. Under-reporting of royalties, failure to support the IP as promised, re-interpretation of definitions, sublicensing arrangements, and financial hardship are just some of the common reasons TTOs and their faculty frequently get short-changed.

Our expert panel will show you how to discover these missing dollars using a systematic, thorough auditing process while maintaining positive relationships with licensees. And they’ll also outline the specific steps, after a problem comes to light, you must take to protect your IP and collect your rightfully share royalty payments.

In this eye-opening and how-to session, you’ll also learn:

  • Best practices for monitoring licensee performance and payment
  • When it’s appropriate to conduct desk audits and site audits
  • Case study illustrations of how contract wording can alleviate future issues
  • The legal remedies available to you when a licensee fails to pay
  • “Work out” strategies in cases of financial hardship
  • When to terminate, when to litigate, when to use alternative dispute mechanisms, and when to pull the plug
  • Key contract clauses and contract drafting strategies related to licensee non-performance and other breaches, so you and your IP are protected
  • And much more…

About Your Speakers

Debora Rose Stewart, CPA, CFF, MBA is a Managing Director and co‐founder of Invotex Group. Invotex’s consulting practice consists of a national litigation services practice with a particular emphasis in insolvency and restructuring services and an intellectual property and antitrust practice. The firm additionally provides valuation, management and financing services to owners of intellectual property. Ms. Stewart has more than 20 years of financial and consulting experience. In addition to leading Invotex’s License Management and Royalty Compliance practice, her background includes management responsibilities for Navigant Consulting, Inc.’s Intellectual Property Consulting Services, where she managed large engagements in litigation support services, forensic accounting, and financial investigation services. Ms. Stewart has more than 15 years experience working with corporations, universities and their counsel on intellectual property matters. Her intellectual property experience includes intellectual property compliance, valuation and licensing consulting as well as reasonable royalty and lost profit damage calculations in patent, trademark and copyright infringement and trade secret matters. She also developed a proprietary Royalty Reporting Process to help clients take a proactive approach to managing royalty reporting and revenue. In addition, Ms. Stewart has provided advisory services to clients in all phases of the litigation process. Her assignments have included breach of contract, business interruption, construction claims, accounting malpractice, unfair competition, intellectual property matters and investigative accounting engagements.

 

Judy Ann Byrd, CPA, CIRA, CFF, MBA, is a Director with Invotex Group. She has nearly 20 years experience providing a variety of accounting and consulting services, including corporate restructuring services, litigation services, and valuations. Ms. Byrd has more than seven years experience providing tax, accounting and auditing services (including royalty audits). She is a Certified Public Accountant, a Certified Insolvency and Restructuring Advisor, and is certified in Financial Forensics.

 

Lawrence K. Nodine is a partner in the Needle & Rosenberg Intellectual Property Practice of Ballard Spahr. He is partner-in-charge of the IP Litigation Group and a member of the Trademark and Copyright Group. Since 1983, Mr. Nodine has served as lead counsel, including first chair trial counsel, on a wide variety of cases involving trademarks, copyrights and patents, including the Cabbage Patch Kids trademark case and many complex patent cases including diverse technologies (biotechnology, electronics, programming guides, vehicular telematics, pharmaceuticals, antimicrobial agents, hand-held electronic devices, commercial carpet and flooring systems, and avionics). Mr. Nodine has appeared before the Federal Circuit Court of Appeals and the Eleventh Circuit Court of Appeals. He is a member of the Atlanta and American Bar Associations, the State Bar of Georgia (serving as President of the Intellectual Property Law Section from 1998-1999), and he is admitted to all state and federal courts in Georgia, the Fifth Circuit U.S. Court of Appeals and the Eleventh Circuit Court of Appeals, as well as the Court of Appeals for the Federal Circuit. Since 1987, Mr. Nodine has served as an adjunct professor at Emory University Law School, where he has taught a variety of intellectual property courses. For more than ten years, The Best Lawyers in America has named Mr. Nodine as one of the top IP lawyers in Atlanta.

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CLP Credits are also available.


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