Tech Transfer Central

Considerations for Negotiating and Drafting Enforcement Terms in IP License Agreements

Format: On-Demand Video/Transcript, or DVD
Originally presented: Wednesday, February 17, 2021

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As the recent Gensetix case shows, enforcement terms are not to be overlooked or undervalued in your IP license agreements…

Universities and their tech transfer offices must be prudent when negotiating terms for agreements granting rights to third parties in university-developed inventions. Among many considerations a TTO must address during negotiations are the scope of rights granted to the third party (e.g., scope of geographic and field of use grants) and the university’s desire to be involved in, or to avoid, future U.S. litigation. These concepts are interrelated and should be considered together.

Case in point: A recent Federal Circuit ruling in Gensetix v. Board of Regents of the University of Texas System is yielding important lessons about the proper way to construct license agreements — particularly with regard to rights to enforcement among licencees — as well as the role of sovereign immunity when a litigant seeks to force a state university to join an infringement suit. 

Tech Transfer Central has teamed up with legal experts from Intellectual Property law firm Oblon, McClelland, Maier & Neustadt to guide TTOs and legal counsel in drafting agreement terms to maximize their ability to achieve desired goals — and avoid involuntary joinder — when granting rights in university inventions to third parties. The case also has critical implications for those bringing infringement suits without participation from “necessary parties.” 

Here’s a brief look at the agenda:

  • Legal concepts governing transfer of rights to third parties
  • Impact of agreement language used on enforcement rights 
  • University involvement in enforcing patent rights in the U.S. 
  • Varying levels of rights a university can grant a third party
  • Sovereign immunity as a shield to joinder
  • Assessing “implied obligation” and agreement to cooperate
  • Federal Rule of Civil Procedure 19 (Rule 19) in patent litigation and its correlation to the level of rights granted
  • The Federal Circuit’s Gensetix ruling and what it illustrates about significant agreement language
  • A practical approach to navigating the tension between rights granted and Rule 19

Meet your expert presenters:

Tia D. Fenton is a partner at Oblon, Co-chair of the Litigation practice group, and member of the ITC Litigation practice group.  Ms. Fenton also serves as General Counsel to the firm.  Ms. Fenton has a background in chemistry, biochemistry and genetics, and her practice is focused on pre-litigation counseling, litigation, and post-grant proceedings. 

In addition to litigating cases in district court and before the Federal Circuit, Ms. Fenton represents both domestic and foreign companies in a full range of complex patent matters.  She advises clients on litigation procedure and strategies, litigation avoidance, licensing and negotiation strategies, and the overall protection and enforcement of patent portfolios.  Ms. Fenton also has experience in post-grant proceedings, as well as prosecution-related matters in the chemical, medical device, and pharmaceutical areas.  

Jeff McIntyre is a partner in the litigation and chemical prosecution departments of the Oblon IP law firm.  He is also Vice President of Intellectual Property for a start-up company stemming from university research, and he is on the Board of Directors of Southeast Life Sciences.

Mr. McIntyre’s practice is varied, spanning essentially all aspects of IP law.  As lead litigation counsel, Mr. McIntyre represents plaintiffs and defendants through all phases of patent infringement actions in a variety of technologies. He also represents clients at the United States Patent and Trademark Office seeking patent protection. And his clients are equally diverse, ranging from universities/start-ups to Fortune 500 companies.   

Mr. McIntyre’s combined experience in litigation and patent prosecution not only provides him with unique insight into litigation positions but also allows him to translate lessons learned in the courtroom into prosecution techniques resulting in stronger patents. His dual experience allows him to take a patent from cradle to grave, working with inventors in drafting and prosecuting a patent and then enforcing it in the courts.

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