Tech Transfer Central

Collaborative Research, Licensing, and Inter-Institutional Agreements: Lessons Learned from Real-Life Legal Cases

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: May 18, 2016

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Partnerships between universities have come to characterize a complex range of commercialization activity as collaborative research efforts governed by inter-institutional agreements (IIAs) become more commonplace. However, these partnerships can succeed wildly or fail miserably, depending on how they are structured and operated. And it’s not just the paper agreement that can be called into question. Contentious relationships between co-inventors, research administrators, and the respective TTOs can cause high drama that damage relationships, mire the institutions involved in litigation, and severely impact the future prospect of otherwise valuable innovations.

That’s why Technology Transfer Tactics has teamed up with two experts experienced in drafting agreements that anticipate and prevent future disputes, and who have dealt with the legal aftermath when litigation between universities does occur. Their guidance will help you ensure that your own IIAs and partnership deals protect the future potential of the IP involved, while keeping the deal a win-win for both parties.

Please join John Fraser and Sandra Haberny for this intense and highly informative one-hour distance learning program:

Collaborative Research, Licensing, and Inter-Institutional Agreements: Lessons Learned from Real-Life Legal Cases

You’ll leave this session with a solid plan to improve your IIAs and avert damaging litigation, while also enabling partnerships that stand the test of time and deal up front with areas that often trigger disputes down the road. Here’s a quick look at the agenda:

  • Lessons learned from real-life cases, such as Max Planck et al. v. Whitehead et al., which involved high-stakes RNAi technology, the start-up created out of that research, and competing interpretations of an IIA.
  • Best practices for drafting inter-institutional agreements to address:
    • Overlapping inventors and disclosures
    • Patent prosecution
    • Potential areas of dispute
    • Why defining and documenting “standard” and “usual” practices is critical
    • How scope of the license can be problematic, and how to define it
  • Trends in IP-related lawsuits between universities:
    • Factors related to settlements
    • Overview of the appeals process
    • Who pays what costs?
  • When and why it is best to seek outside counsel in drafting agreements
  • How to avoid disagreements through transparency and open communication

Your Faculty Presenters:

John A. FraserJohn A. Fraser, President, Burnside Development & Associates LLC. John previously served 18 years as Assistant Vice President for Research and Economic Development, and Executive Director of the Office of IP Development and Commercialization, at Florida State University in Tallahassee. During 2006-2007 he also served as President of the Association of University Technology Managers. Prior to FSU, he served as Director of the University/Industry Liaison Office at Simon Fraser University, Vancouver, Canada. In addition, he has held positions as Executive Vice President and co-founder of UTC, Inc., a venture capital-backed, North Carolina-based university licensing/technology transfer firm; President and CEO of UTI, a University of Calgary based for-profit technology transfer company; and Vice President of TDC, Inc., a Toronto and Vancouver-based venture capital firm. He has co-founded three companies and assisted entrepreneurs in launching another dozen technology-based start-ups.

Sandra L. HabernySandra L. Haberny, PhD, is an associate in the Newport Beach office of Irell & Manella LLP, where she is a member of the firm’s litigation and IP litigation practice groups. Dr. Haberny has extensive experience representing clients in a variety of commercial and patent litigation matters in both state and federal court. Her clients span numerous industries, including biotech, pharmaceutical, energy, and higher education, and her practice covers multiple areas of law including patent litigation and complex business litigation.

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