Tech Transfer Central

Drafting and Negotiating Preferential Rights in University IP Licenses and Sponsored Research Agreements

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: April 18, 2017

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Drafting and Negotiating Preferential Rights in University IP Licenses and Sponsored Research AgreementsAlthough preferential rights such as options, rights of first refusal, rights of first offer, and rights of first negotiation are frequently used in IP licenses, there is widespread misunderstanding about what each means. Lack of clarity and improper definition can lead to confusion, which in turn often results in placement of the same standard provision in every agreement. That can be a big miss for your university.

In fact, preferential rights allow customized access to IP assets for licensees and can be a significant negotiating point when drafting deals with research partners. But, if these provisions are improperly drafted or allocated in the license, you risk leaving dollars on the table – or even inadvertently giving away your future stake in the IP.

That’s why Technology Transfer Tactics’ Distance Learning Division has scheduled this one hour session reveal drafting and negotiation strategies and best practices for addressing the structure, assignment and enforcement of preferential rights.

Join us for this critically important program led by University of Utah Technology and Licensing Manager Beth Drees, PhD, MBA. Dr. Drees will:

  • Discuss the four main types of preferential rights and their use, benefits and limitations:
    • Options
    • Rights of first refusal
    • Rights of first offer
    • Rights of first negotiation
  • Instruct you on how to use preferential rights as a negotiation tool with licensees and potential research sponsors
  • Review examples of agreements and contract language
  • Outline key strategies for negotiating rights to Improvements with research partners and licensees
  • Give you a solid understanding of field-of-use provisions, and how they may fit into the preferential rights discussion
  • Provide best practice advice for structuring incentives to sublicense outside of field of use

Your Program Leaders:

Beth DreesBeth Drees, PhD, MBA
Lead Health/Science Technology Manager
Technology & Venture Commercialization
University of Utah

In 2006, Beth Drees joined the University of Utah’s Technology and Venture Commercialization office (TVC), where she has worked with technologies and inventors working in health sciences, diagnostics, and therapeutics, and acting as the TVC liaison for ARUP Laboratories and Huntsman Cancer Institute. Prior to her current position, Beth left academic research in 1998 to take a position as a scientist at Arcaris, a Utah company focused on target discovery and validation. Several years later, she moved to University of Utah start-up Echelon Biosciences, as the Director of Biology, where she led a team in product and assay development.

Antoine BellemareAntoine Bellemare, B.A.Sc., Ph.D., CLP
Technology Transfer Officer
Vice-rectorat à la recherche et à la création
Pavillon des Sciences de l’éducation

Dr. Bellemare is a technology transfer officer and patent committee member at Université Laval and the founder of the consulting firm Research Patent Management. He has more than twenty years of experience in technology development in a wide array of environments (VC, startup, public multinational company and academia). His principal expertise is in the management of IP assets, in drafting and negotiating of IP agreements, in IP valuation, and in the management of technological projects. He holds a PhD in electrical engineering from Université Laval. He has two patented inventions and several well-cited publications to his credit. He is a Certified Licensing Professional (CLP) and he is deeply involved in the Licensing Executives Society (LES) where he serves as governor on the CLP board, Co-Chairman of the Quebec City Chapter, Faculty for the IP & Licensing Basics course, Chair of the Valuation and Pricing committee and member of the CLP Exam Development and Maintenance committee. He is also the Associate Editor (Americas) of IEEE’s Industrial Electronics Technology Transfer News (IETTN).

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CLP Credits are also available.

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