Tech Transfer Central

Licensees in Trouble: How to Protect University IP and Preserve the Relationship

Format: On-Demand Video/Transcript, or DVD
Originally presented: Thursday, September 8, 2022
Price: $197
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The relationships between TTOs and their licensees can be complicated. This is particularly true when those licensees are faculty start-ups born within the university system and their leadership teams still hold positions in the university and continue to disclose inventions to the TTO. It’s important to keep a positive and respectful relationship, but when the licensee is unable to fulfill its obligations, things can get sticky. And with all licensees, faculty founded or not, disappointing performance or lack of progress can give rise to difficult conversations – and difficult decisions.   

Some situations, like failure to reach a specific milestone, should be detected early on and be dealt with in a supportive fashion. But when a licensee becomes insolvent, fails to pay royalties, or goes missing when reports or fees are due, trust wanes and the relationship — not to mention the future of the university’s IP — can be put in jeopardy.  

That’s why our Distance Learning Division has tapped leaders from the licensing team at the University of Louisville to present this practical webinar:

Licensees in Trouble

During this one-hour program, our team of presenters will detail what factors contribute to licensee difficulties and failures — and how to mitigate the fallout. Here’s a brief look at the agenda:

  • Why do licenses fail – is it the technology? Was the company not a good fit?
    • What can we learn from this and how can it be leveraged for the future of the tech?
  • Actions before the failure:
    • Diligence
    • Compliance
    • Potential
  • Contractual terms to help the university in the event of failure:
    • Reporting obligations
    • Termination terms
  • Getting the IP back:
    • What you can learn from the company’s failure
    • Getting improvements back
  • Ramifications for public vs private universities
  • Dissect two case study examples for lessons learned

Meet Your Session Leaders:

Sara PriceSara Price, JD
Commercialization Manager
UofL Innovation and Commercialization

Ms. Price has been with the Innovation and Commercialization office since 2017. Her primary responsibilities include reviewing and drafting contracts for research and commercialization, overseeing research support agreements, managing university technologies, and overseeing the legal intern and extern programs for the office.

T. Greg TuckerDr. T. Greg Tucker
Commercialization Manager
UofL Innovation and Commercialization

Dr. Tucker has been with the Innovation & Commercialization office since 2021. His primary duties include securing and reviewing disclosure forms from the faculty, managing university technologies, negotiating license agreements, coordinating with researchers for finding funding opportunities and training programs for their students towards commercialization, and supporting inventors to determine most appropriate IP routes with partnering law firms.

Jericho WilkersonJericho Wilkerson
Commercialization Manager,
Engineering and Physical Sciences
UofL Innovation and Commercialization

Jericho Wilkerson is a commercialization manager with the UofL Innovation & Commercialization, where his primary responsibilities involve assessing, licensing and managing technologies within the fields of engineering and physical sciences.

Jericho interned with the UofL Innovation & Commercialization as an Assistant Commercialization Manager for two years while earning his degree in Bioengineering from UofL. This experience cemented Jericho’s interest in the dynamic field of tech transfer and allowed him to develop the sophisticated skill set he currently utilizes. Jericho likes that his work allows him to have an impact on the entire licensing process, and he is motivated by the fact that successfully licensed technologies can benefit the lives of others.

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