Tech Transfer Central
Industry-Sponsored Research Management

Working Effectively with University Counsel to Speed the Licensing Process

Format: MP3, CD, or PDF Transcript
Originally presented: April 29, 2010

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For many tech transfer professionals in the throes of negotiating a deal, university counsel sometimes seems more like an opponent than part of the team. In-house legal reviews have often been cited as slowing down negotiations, alienating licensees, insisting on terms that set negotiations back, and representing a black hole that agreements may never emerge from. In short, TTO execs and licensees alike are often frustrated by a bureaucratic approach, when what’s called for is a fast, business-minded approach that reflects the fast-paced realities of the corporate world.

Some in-house attorneys “get it,” but for most TTOs there’s plenty of room for improved communication, responsiveness, flexibility, and business savvy. That’s why we’ve lined up two attorney experts with first-hand insights into the challenges often presented by university counsel – and they’re ready to share a wealth of specific strategies for speeding reviews, managing the in-house counsel relationship, enhancing deal term flexibility, promoting culture change, and getting deals done faster and with less red tape.

Working Effectively with University Counsel
to Speed the Licensing Process

In this down-to-earth 90-minute program, Sean O’Connor, director of the Entrepreneurial Law Clinic and the University of Washington, and Bryce Pilz, assistant general counsel for the University of Michigan and its TTO, will help you break down communication barriers and dramatically reduce the frustrations of in-house legal reviews.

Topics to be covered:

  • How to avoid the “black hole” and speed in-house counsel reviews
  • Industry’s pet peeves, and how to avoid them
  • Establishing standards for responsiveness
  • Defining in-house counsel’s role, eliminating delay, and reducing duplication of effort
  • Pros and cons of housing all legal services in the general counsel’s office vs dedicated IP attorney within the TTO
  • Benefits and drawbacks of utilizing outside counsel
  • Bridging the communication gap between tech speak and legal mumbo jumbo
  • Templates: The good, the bad, the absolutely necessary
  • Deal terms counsel insists on that make licensees squirm
  • How changing seemingly mundane contract language can put your entire university at risk for litigation
  • Understand the differences in restrictions in public vs private university systems
  • And more…

Your Expert Presenters

Sean O’Connor
University of Washington School of Law
Chair, Law, Technology & Arts Group
Director, Entrepreneurial Law Clinic
Professor of Law

Professor O’Connor specializes in intellectual property and business law involving biotechnology, cyberspace/information technology, and new media/digital arts. He is Of Counsel to Seed IP Law Group. Professor O’Connor lectures and publishes on IP and business law around the world, including India, Japan, Italy, Spain, Mexico, and Canada. He began practicing law at major international business and technology law firms in New York and Boston, and was General Counsel to Rhizome.org from 2000-2006. Professor O’Connor began his academic career at the University of Pittsburgh before joining the faculty at the University of Washington School of Law in 2003, where he was promoted to Associate Professor with tenure in 2006. He was Visiting Professor and Kauffman Fellow in Law & Entrepreneurship at University of California Berkeley School of Law in 2007. Professor O’Connor is also Associate Director, Center for Advanced Studies and Research on IP (CASRIP); Faculty Fellow, Institute for Public Health Genetics; Faculty Fellow, Center for Innovation & Entrepreneurship; and Faculty Fellow, Economics Policy Research Center. He has written numerous articles and book chapters, and is co-author of Genetic Technologies and the Law (with Patricia Kuszler & Katherine Battuello; Carolina Academic Press 2007). Professor O’Connor is admitted to practice in Washington, New York and Massachusetts.

Bryce Pilz
University of Michigan
Assistant General Counsel
Office of General Counsel and
Office of Technology Transfer

Bryce Pilz joined the Office of General Counsel and Office of Technology Transfer in 2006 and works on patent, copyright, and technology transfer, litigation, and policy issues. Prior to joining the University, Bryce was an associate at Kirkland & Ellis LLP in Chicago, where he gained significant experience in patent litigation and transactional matters encompassing a wide variety of technologies.

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