Tech Transfer Central

Best Practices for Drafting University-Industry R&D Partnership Agreements

Format: On-Demand Video/Transcript, or DVD
Originally presented: July 08, 2014

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Price: $197
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Successful collaborative research and development projects have one thing in common: a rock solid partnership agreement that helps create a win-win environment for both the research institution and the business needs of the partners. In fact, the legal framework underpinning R&D partnerships is cited by experts as the deciding factor in the success of a project, as well as the satisfaction of the partners.

But, while these partnerships can foster faster, more efficient innovation, they are not without their challenges. Only proper contract design can help you to avoid a financial sinkhole, loss of intellectual property, questionable research results, and damaging conflicts among researchers, industry representatives, and your TTO.  

That’s why we’ve tapped two experts to provide you with expert guidance on drafting an R&D agreement that will attract industry and drive your research projects forward while also preventing the kinds of problems that can wreak havoc with your involved faculty and damage relationships between you and your researchers — and with industry partners. In this one-hour distance learning program sponsored by Technology Transfer Tactics, Mr. Lee will cover:

  • Best practices for negotiating contracts with an eye toward avoiding common disputes and conflicts
  • Planning for future sole and/or joint commercialization
  • Handling intellectual property:
    • IP contributions of each party, including licensing and/or ownership rights and “necessity” clauses
    • Designating and defining IP resulting from the joint development (“Project IP”)
    • Ownership and license rights as to Project IP, including grant back rights and licensing to third parties
    • Patenting and enforcement of Project IP
  • Future cooperation of the parties related to the joint development agreement
  • The impact of recent patent legislation  — particularly the America Invents Act — on joint development agreements.
  • Understanding and addressing industry’s needs, wants and point of view when entering into an R&D agreement

Meet Your Presenters:

Robin Rasor, Managing Director of Licensing, University of Michigan Tech Transfer. Ms. Rasor oversees staff handling all functions of the licensing process at the University ranging from management and marketing of disclosures to developing and negotiating appropriate licensing terms for license agreements, and finally to maintaining and monitoring existing agreements. She has earned the CLP (Certified Licensing Professional) credential and serves on the CLP Board of Governors. Ms. Rasor is a Past President of the Association of University Technology Managers (AUTM) Board of Trustees.

Michael Q. Lee, Director, Stern, Kessler, Goldstein, Fox, focuses his practice on working with companies to strategically protect and leverage their IP assets.  He has extensive experience protecting inventions in a diverse range of technologies, including wireless transceivers; analog and digital control systems; computer processor and memory architectures; graphics processing units; expert systems; medical devices; and bioinformatics. Mr. Lee has a particular focus in the software, database, e-commerce and financial services/business method areas with over 20 years of experience protecting such inventions in the United States and throughout the world. Mr. Lee counsels on a wide range of technology-related transactions, including joint development agreements, strategic alliances, license agreements, asset purchase agreements, contractor and services agreements, shrink wrap license agreements and manufacture/supply agreements.  He is a Certified Licensing Professional™.

Mr. Lee was named to the Certified Licensing Professionals Inc. 2012-13 Board of Governors.  He is also a Vice President of the Licensing Executives Society (USA/Canada).  He has also been featured as one of IAM 250’s “World’s Leading Patent & Technology Licensing Lawyers” from 2010-2012.

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