Tech Transfer Central

Building Better Licenses: Common Weaknesses and How to Strengthen Your Agreements

Format: On-Demand Video/Transcript, or DVD
Originally presented: April 27, 2011

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Price: $197
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Avoid the twists, turns and detours that can derail your agreement before it even gets inked!

Taking short cuts to get a deal completed may be tempting, but the easy way often leaves agreements riddled with holes that later result in disagreements, wasted time and effort, and ultimately a damaged relationship with your inventor and licensee. And even a careful negotiator can step into dozens of common traps and potholes that leave money on the table and bring less than optimal rewards for your valuable technologies.

By carefully defining terms, responsibilities, and compliance expectations up front, however, you can minimize the chances of a host of future complications and disputes: under-reporting of royalties, failure to support the IP as promised, re-interpretation of definitions, complex sublicensing issues, and many others. And by knowing – and preparing for – common mistakes and weaknesses in license agreement language, you can strengthen your deals and bring more benefits to your institution and your faculty.

That’s why Technology Transfer Tactics recruited an A-level legal team to provide you with a hands-on webinar workshop that will peel away the layers of license agreements and expose the weaknesses that pose serious threats to the success of the agreement.

Join attorneys Peter Durant (Nixon Peabody) and David Klein (Paul Hastings) for Building Better Licenses: Common Weaknesses and How to Strengthen Your Agreements. This 90-minute program will help you to:

  • Optimize key license terms in critical areas including:
    • Sublicensing
    • Royalty terms
    • Audit rights
    • Quality control
    • Warranties and Indemnifications
  • Streamline the license drafting process by knowing:
    • When to use forms — and when to avoid them
    • When to seek legal advice
  • Negotiate the deal more effectively by understanding:
    • Who should be present at the table?
    • Know what to expect from the other side
    • What to include in your “negotiation playbook”

Your Expert Presenters:

Peter Durant is a Partner with the Nixon Peabody law firm in Rochester, New York. He is engaged primarily in contract negotiation and related advice for domestic and foreign clients, usually in areas involving intellectual property issues. In particular, he counsels businesses, universities, and individuals on the sale, acquisition, licensing, and exploitation of their intellectual property assets. Such transactions have included negotiation of sophisticated contracts for computer hardware and software systems, drug and other technology licenses, franchise and other distribution agreements, and for the sale and construction of sophisticated transportation signaling systems and other technology with state and federal governmental agencies. Mr. Durant recently served as the interim Technology Transfer Director of Roswell Park Cancer Institute, where he helped the Institute establish commercial and collaborative relationships with other universities and businesses. During his tenure he entered license negotiations with two foreign and three domestic licensees of Roswell Park technology and helped establish three spin-offs to commercialize Roswell Park discoveries.  He also advises institutions on the intellectual property policies and procedures.

David M. Klein is a partner in corporate practice in the New York office of Paul Hastings. Mr. Klein is an expert on the structuring and negotiation of complex technology and technology-related transactions including outsourcing transactions, technology development and licensing agreements, mergers and acquisitions, joint ventures, strategic alliances, financing and other corporate transactional matters.  His practice covers all aspects of intellectual property law, including patents, trademarks, copyrights, Internet and e-commerce. Mr. Klein’s practice also covers the intellectual property aspects of complex financing transactions including capital markets, securitization and structured finance transactions. Mr. Klein has been recognized in Chambers USA and Legal 500 guides as a leader in the field of technology and IT outsourcing. Mr. Klein has also been recognized in SuperLawyers as one of the Top Attorneys in the New York Metro Area.  Mr. Klein is the author of a book on the handling of intellectual property issues in corporate transactions titled Intellectual Property in Mergers and Acquisitions, published by West Group.

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