Tech Transfer Central

Drafting and Negotiating IP Rights in Sponsored Research Agreements

Format: On-Demand Video/Transcript, or DVD
Originally presented: Tuesday, December 6, 2016
Price: $197
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Industry-sponsored research has become a critical source of funding for many university labs in the face of dwindling federal grant dollars. For many projects it’s the lifeblood keeping research and innovation moving forward. However, when companies fund university innovations, many will seek ownership of the research results, including all IP rights, and sometimes even a portion of the future inventions created from the sponsored research.

A properly executed sponsored research agreement is imperative to protect the university’s stake. Typically, an SRA will address ownership, licensing rights, confidentiality, rights to future IP, and enforcement of all IP rights. Each term and condition of the agreement requires expert analysis and negotiation.

That’s why Technology Transfer Tactics’ Distance Learning Division has created this critically important one-hour program:

Drafting and Negotiating IP Rights in Sponsored Research Agreements

Our experts – who have vast experience on both sides of the table — will examine key considerations and outline critical provisions, while offering best practices for drafting and negotiating SRAs that protect your university’s interests without turning off industry sponsors. Here’s what they’ll cover:

  • Understanding the parties’ interests:
    • Motivation for entering into an agreement
    • Research and business cultures
    • Knowing the overall objectives of each party
  • Best practices for negotiating difficult key provisions:
    • IP rights, present and future
    • Liability
    • Indemnification and more…
  • How to avoid risks to tax exempt status
  • Examples of model language that leads to effective collaboration
  • Facing and overcoming licensing challenges:
    • Sublicenses
    • Licenses meant to advance sponsored research

Meet your presenters:

James J. Casey, Jr., JDJames J. Casey, Jr., JD
Office of Sponsored Programs
American University

James Casey is director of the Office of Sponsored Programs at American University in Washington, DC. In this role he leads and directs eight sponsored research professionals in pre-award and non-financial post-award research administration. His research administration career spans 22 years, and his previous higher education institutions include Marquette University, Northwestern University, the University of Texas at San Antonio, and the University of Wisconsin-Madison.

James has been a member of the Wisconsin Bar for 26 years and has been a member of the National Council of University Research Administrators (NCURA) since 1995 and has held a number of leadership positions in that organization, including two terms on the Board of Directors, inaugural senior editor of the NCURA Magazine, and editor of the Research Management Review.

Dr. Robert H. UnderwoodDr. Robert H. Underwood
McDermott Will & Emery

Dr. Underwood has extensive experience protecting U.S. and international intellectual property rights, and identifying and evaluating third-party IP risks, to help clients achieve business objectives. He assists clients with strategic counseling, patent portfolio development and management, patent prosecution, patentability, non-infringement, invalidity and freedom to operate opinions, due diligence, and agreements that involve IP rights. He also assists clients with product planning matters, patent life-cycle management and the acquisition and divestment of IP assets.

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