Tech Transfer Central

Bullet-Proof Your License Agreements: Prevent Post-License Disputes and Shed Dead-Weight Licensees

Format: On-Demand Audio/Transcript, or DVD
Originally presented: July 29, 2010

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Price: $197
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The road from the research lab to a signed license agreement is full of twists, turns and detours that can derail your agreement before it even gets inked. While it may be tempting sometimes to take short cuts to get a deal completed, the easy way often leaves agreements riddled with holes that later result in disagreements, differing interpretations, wasted time and effort, and ultimately a damaged relationship with your inventor and licensee.

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 arrangements, and many others.

Even under the most carefully crafted agreement, you’ll occasionally be saddled with a licensee who just doesn’t play by the rules, experiences a business downturn that stalls its plans to commercialize your IP, or simply does not meet its obligations for reporting, payment, or product development. In some case, swift action must be taken to either compel compliance or shed these “dead weight” licensees.

That’s why Technology Transfer Tactics has recruited a team of IP licensing experts to break down the drafting, reporting and auditing process to help you first draft airtight agreements and then successfully manage your licensees – or know when to cut them loose. Join Dan Burns of Daniel Burns and Associates and Angela Hodge from the University of Texas at Austin for a supremely practical 90-minute program:

Bullet-Proof Your License Agreements:
Prevent Post-License Disputes and Shed Dead-Weight Licensees

This program will be jam-packed with best practices for drafting rock-solid agreements, maintaining top-notch compliance and audit programs, and dealing effectively with problematic licensees. Here’s what our expert team will cover:

  • Drafting the License:
    – Tips on avoiding disputes before they start: carefully defining the terms
    – Common problems and solutions
    – Using document templates, and where they fall short
    – Creating an effective review process
    – Negotiating and drafting amendments
    – Communication tips for successful licensee and inventor relationships
  • License Compliance:
    – Creating or improving a licensee compliance program
    – Which license agreements should be audited and why
    – How to perform ongoing license reviews
    – Common warning signs of royalty under-reporting – and some not-so-common ones
    – Red flags for other forms of non-compliance
  • Royalty Audits:
    – Best practices for evaluating royalty reports
    – Proven techniques for self-audits and drafting licensee questionnaires
    – The TTO’s role in supporting the royalty auditor
    – Typical engagement fees and timelines
  • Shed “Dead-Weight” Licensees:
    – How to successfully work through confidentiality issues
    – How to use the audit report as a road map to resolution, and as evidence
    – Insight into common and not-so-common legal terms and conditions
    – Key court cases addressing non-compliance
    – Legal methods of dissolving a license

The tips and expert strategies you’ll gain for your modest enrollment fee could save you tens or hundreds of thousands in lost royalty dollars, while ensuring your licensed IP reaches its full potential.


Daniel Burns, President of Daniel Burns and Associates, leads multi-disciplinary teams in projects involving economic, accounting and financial issues in valuation, dispute resolution, and forensic investigations. He has extensive experience in many industries, including pharmaceuticals, medical devices, biotechnology, semiconductors, semiconductor capital equipment, communications, software, energy, and the internet. His clients include universities, leading corporations, law firms, and U.S. government laboratories. Dan has performed technology and enterprise valuations in the context of M&A, financing arrangements, license agreements, and liquidations. He has reviewed intellectual property (IP) portfolios to generate additional cash flows from underutilized IP and has participated in many significant IP litigation matters as well as compliance investigations of technology license, publishing, plant license, and mineral lease agreements, and regularly consults with clients regarding the structure and strategic goals of their licensing programs. Mr. Burns was formerly a partner in an international consulting firm dedicated to assisting clients with complex economic, accounting, and financial needs. Previously, he held the title of Director in the San Francisco Intellectual Asset Management practice of a “Big 5″ accounting and consulting firm. Dan regularly speaks to various leadership forums on IP matters and has appeared on numerous occasions as an expert witness at trial, arbitration, and in deposition.

Angela Hodge, Assistant Director of Accounting and Licensee Compliance in the Office of Technology Commercialization at the University of Texas at Austin, oversees accounting and licensee compliance teams, financial management functions, royalty distributions, and contract management issues. Angela brings more than 20 years of experience in the areas of auditing, contract management, general accounting, and taxation.

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 2008 guide as a leader in the field of technology and IT outsourcing. 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. His practice has been highlighted on the front page of the New York Law Journal and he has been cited in HRO Today as one of “the 120 Superstars of HR Outsourcing.”

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