Tech Transfer Central

Fast-Tracking IP Licenses for COVID-Related Innovations: Critical Points of Consideration for University TTOs

Format: On-Demand Video/Transcript, or DVD
Originally presented: May 15, 2020

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When the COVID-19 outbreak became a global pandemic, and life as we knew it began to shut down, university researchers in the U.S. and abroad stepped up to support mitigation efforts by hunting for solutions to PPE supply shortages and working to develop rapid testing devices, vaccines and therapeutics. With that effort came an onslaught of disclosures and innovations requiring a different approach to licensing given the immediate and urgent needs of our local, regional, and national communities.

To meet the challenges of rapid commercialization, technology transfer offices and their counsel have developed a variety of “fast-tracked” licenses aimed at advancing technology swiftly to the marketplace. Initiatives such as the Open COVID Pledge, the COVID-19 Technology Access Framework and AUTM’s COVID-19 Licensing Guidelines have helped guide university TTOs in dramatically decreasing the time to market and forging licensing collaborations, while maintaining a long-term commitment to IP protection.

To help you navigate the new and unfamiliar realities of licensing critically needed innovations in the compressed timelines demanded by this pandemic, Tech Transfer Central’s Distance Learning Division has teamed up with esteemed IP attorney Michelle Rosenberg with the law firm Patent GC and Professor Jorge L. Contreras of the University of Utah College of Law for this urgent webinar:

Fast-Tracking IP Licenses for COVID-Related Innovations:
Critical Points of Consideration for University TTOs

In this practical program, our panelists will discuss the critical issues TTOs should consider when fast-tracking licenses — and how to successfully navigate the new challenges posed by this uncharted territory.

Topics will include:

  • Review of various COVID-related licensing initiatives, including:
    • Open COVID Pledge
    • COVID-19 Technology Access Framework
    • AUTM COVID-19 Licensing Guidelines
    • And others…
  • Key licensing terms and how to evaluate your risk tolerance to choose the appropriate license format
  • Understanding the pros and cons of rapid licensing and commercialization
  • Protecting IP while quickly disseminating innovations
  • How to handle improvements given the early stage of many COVID-related technologies
  • Look into the future: What fast-tracking now can mean for the technology’s future

Meet Your Program Leaders:

Michelle RosenbergMichelle Rosenberg
Attorney
Patent GC

Ms. Rosenberg is an intellectual property attorney with substantial experience developing and managing sophisticated IP portfolios, resolving IP-related disputes, and drafting and negotiating complex license agreements. In addition to supporting companies of all sizes and stages of growth, Michelle works closely with the technology transfer offices of some of the nation’s top-tier universities, providing part-time IP counsel services, including review of invention disclosures, pending applications and patent portfolios, budget preparation/analysis, supervising outside counsel, and developing best practices for internal processes. Michelle also assists companies with implementing open source license compliance programs.

Michelle received her BS in electrical engineering from Worcester Polytechnic Institute, graduating with high distinction, and her JD from Boston College Law School, graduating magna cum laude. Michelle is admitted to practice in Massachusetts and before the U.S. Patent and Trademark Office and the Supreme Court of the United States.

Jorge L. ContrerasJorge L. Contreras
Professor, College Of Law
Adjunct Professor, Human Genetics
University Of Utah

Professor Contreras teaches in the areas of intellectual property law, property law, and genetics and the law. He has recently been named one of the University of Utah’s Presidential Scholars, and won the 2018-19 Faculty Scholarship Award from the S.J. Quinney College of Law. Professor Contreras’s current research focuses, among other things, on the development of technical standards and the use and dissemination of data generated by large-scale scientific research projects. He has edited six books and published more than 100 scholarly articles and book chapters. He has been quoted by numerous media outlets including the New York Times, Wall Street Journal, Economist, Bloomberg, Washington Post, Korea Times and has been featured on NPR, PRI and BBC radio shows and a range of podcasts and online news programs.

Professor Contreras serves as Co-Chair of the Interdisciplinary Division of the ABA’s Section of Science & Technology Law and a member of the Advisory Board of the American Antitrust Institute. He has served as Co-Chair of the National Conference of Lawyers and Scientists, a member of the National Academy of Sciences (NAS) Committee on Intellectual Property Management in Standard-Setting Processes, the National Institutes of Health (NIH) Council of Councils, the Advisory Council of NIH’s National Center for the Advancement of Translational Sciences (NCATS), the Cures Acceleration Network (CAN) Board, the National Advisory Council for Human Genome Research, and the Intellectual Property Rights Policy Committee of the American National Standards Institute (ANSI). He also serves on the Scientific Advisory Board of the Utah Genome Project.He is a cum laude graduate of Harvard Law School (JD) and Rice University (BA, BSEE) and clerked for Chief Justice Thomas R. Philips of the Texas Supreme Court. 

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