Negotiating and drafting a license agreement that extracts maximum value for your organization’s technology is a complex task involving a broad range of “moving parts.” Dozens of key terms and provisions are all in play — and it often seems like a miracle when both sides sign a final agreement you can both live with.
After the deal is struck, the second guessing begins. Could you have gotten more? Could you have given less? Played your cards just a little better?
Wouldn’t you love to have a panel of expert technology licensing professionals providing advice and guidance based on their many years of experience with hundreds of similar negotiations?
We’ve arranged for you to spend 90 minutes with a panel of top tech transfer veterans, who’ll share their winning negotiating and contracting strategies, and help ensure you’re getting the best terms you can for your institution’s valuable innovations.
Secrets of Win-Win Contracts:
Negotiating and Contracting Tips from the Tech Transfer Experts
In this idea-filled and strategy-packed session, you’ll learn best practices, tips, and techniques honed over the course of hundreds of negotiating sessions by our expert panel of licensing veterans. You’ll come away with not only dozens of negotiation and contracting insights and tactics, but also a higher comfort level that you are doing everything you can to secure optimal terms and financial returns for your organization.
Here’s just a sample of what we’ll cover in this dynamic session:
- out of the gate: addressing deal-breakers first
- assessing the strength of your bargaining position
- setting expectations
- creative methods for breaking an impasse
- why a good negotiator must be a good “actor”
- horse-trading: never give without taking
- 5 key provisions you didn’t know you needed
- recognizing and responding to common ploys
- using data to your advantage
- post-MedImmune clauses
- using silence as a weapon
- nibbling for more dollars
- inflation-adjusted royalty rates
- dealing with outside pressures
- using minimums and floors
- setting milestones
- balancing up-fronts and royalties
- focus on definitions to avoid problems later
- and much, much more!
Meet Your Expert Panel
Alan Bentley, is director of commercialization for Cleveland Clinic Innovations, where he leads a team of licensing professionals dedicated to the commercialization of medical device technologies resulting from Cleveland Clinic Foundation research. His specific focus is in cardiovascular devices and products. Prior to joining the Cleveland Clinic, Alan was associate director of the University of Virginia Patent Foundation, where he played a principal role in overseeing the licensing activities. Alan has been a registered Patent Agent since 1999, and is widely regarded as one of the leading experts on licensing and contracting issues commonly faced by technology transfer offices and organizations.
Gail Taylor Russell, JD, MBA, an alliance partner of tech transfer executive leadership firm LGE Execs, is founder and president of Austin, TX-based Taylor Russell & Russell, P.C. Ms. Taylor Russell, a registered patent attorney, also serves as Adjunct Professor in Intellectual Property Law at the University of Texas at Austin and as a Selection Committee Member of the Texas Emerging Technology Fund. With over twenty five years in the technology field, Ms. Taylor Russell’s experience combines business, technical and legal hands-on experience and education with in-depth intellectual property and technology law expertise. Her firm concentrates in structuring and negotiating complex U.S. and international licenses and other technology-related agreements, as well as IP strategic planning, acquiring and enforcing IP rights, and conducting IP audits, due diligence opinions, and infringement and validity opinions.
Kevin M. Levy is an attorney with Miami-based Gunster Yoakley, where he co-chairs both the Technology Practice Group and the Emerging Growth Companies Practice Group. Kevin counsels U.S. and overseas clients on a broad range of business and technology matters. He has extensive experience representing companies with significant technology operations, and also represents entrepreneurial ventures and emerging companies. Much of Kevin’s practice involves advising clients on the procurement, licensing and transfer of intellectual property rights. He was included in The Best Lawyers in America for Technology Law both in 2007 and 2008.
Who Should Listen
Technology transfer managers and professionals, licensing managers and associates, IP consultants and attorneys, corporate technology managers, university counsel, intellectual property owners, commercialization managers, and others involved in license negotiation and contracting.