Tech Transfer Central

The Top 10 Legal Minefields for TTOs and How To Step Around Them

Format: MP3, CD, or PDF Transcript
Originally presented: October 22, 2009

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The road from lab to marketplace is littered with legal minefields. From securing IP rights and assuring airtight patent prosecution to drafting and negotiating license agreements, you must watch your step and tread lightly to avoid triggering expensive legal challenges that will not only drain your budget, but can stall your innovations and the revenue potential they hold.

A few large TTOs are fortunate enough to have a crack in-house legal team to turn to when the path to commercialization turns treacherous. But for tech transfer offices without that luxury, it’s even more critical to clear potential dangers from the start, and keep their desks clear of distracting and potentially devastating — yet ultimately avoidable — legal quagmires.

That’s why Technology Transfer Tactics’ Distance Learning Division has recruited a top-notch legal team — Catherine Shea, the University of Colorado’s Associate Counsel for Technology Transfer and Research Compliance, and Savery M. Gradoville, a partner in the Washington, DC office of Steptoe & Johnson LLP — to help TTOs identify, fortify against, and prevent the top 10 legal challenges you face in your licensing and commercialization efforts. Join us for this eye-opening 90-minute audioconference:

The Top 10 Legal Minefields for TTOs and How To Step Around Them

For a tiny fraction of the cost of consulting with outside counsel, this audioprogram will give you advice on how to:

  • Protect proprietary data under the open records act:
    • Understand the statutory protections
    • Negotiate procedural protections
    • Identify the safe harbors
  • Avoid the bureaucratic death spiral:
    • M&A issues
    • Sublicensee and/or sponsor issues
    • Setting, meeting and beating deadlines
  • Handle employment and COI issues when faculty double as company employees
  • Conduct a fail-safe due diligence investigation (including a useful due diligence checklist)
  • Risk-shift to licensees — and what you’ll have to give up in return
  • Ensure effective use of indemnification, warranties, and limitations of liability
  • Structure your deals to assure:
    • Optimal tax treatment
    • Asset protection
    • Minimal payment risks
  • Comply with federal mandates:
    • Bayh-Dole
    • Assignment of IP
    • Manufacturing restrictions
  • Identify proper — and improper — use of boilerplate clauses
  • Build a well-oiled negotiating team

Your Expert Presenters

Catherine Shea is Associate Counsel for Technology Transfer and Research Compliance with the University of Colorado. Catherine helps the licensing team in negotiation and review of agreements, and manages any other legal issues that arise. As part of her research compliance responsibilities, she focuses on research misconduct and export control law. Catherine has held positions with the National Center for Atmospheric Research, Qwest Communications, the U.S. Department of Commerce, and the National Oceanic and Atmospheric Administration. Her practice focus is in intellectual property law, technology transfer, licensing and related service agreements, and procurement of cutting-edge technologies for research programs.

Savery M. Gradoville is a Partner in the Washington, DC office of Steptoe & Johnson LLP. Savery is a member of the firm’s Corporate, Securities and Finance and Intellectual Property groups. She is also part of the Corporate Transactions group, where she concentrates on commercial transactions with special emphasis on intellectual property and technology issues. Ms. Gradoville is experienced in structuring, drafting documentation for, and negotiating a wide variety of contractual transactions, including licensing and transfer of intellectual property and technology including copyrights, patents, trade secrets, and trademarks. Ms. Gradoville advises software publishers, developers, integrators, distributors, computer and equipment manufacturers, service providers, biotechnology and life sciences companies, medical research organizations, hospitals, joint ventures, associations, authors, and inventors in the acquisition, protection, and exploitation of intellectual property and the negotiation of licenses and other transactions including commercialization of university-developed biotechnology and patents, and all forms of material transfer agreements. She represents both licensors and licensees and others seeking rights to use and/or own third-party intellectual property rights.

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CLP Credits are also available.

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