Tech Transfer Central

Reap the Benefits of a Strong Post-License Monitoring System

Format: On-Demand Video/Transcript, or DVD
Originally presented: November 29, 2011

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Price: $197
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Most licensees act in good faith and strive to abide by their contractual obligations. But the fact remains that the majority — intentionally or not — fail to pay their full royalties due, use dubious accounting methods and creative definitions, or otherwise fail to honor the terms of their license agreement.  Under-reporting of royalties, failure to support the IP as promised, re-interpretation of definitions, sublicensing arrangements, and financial hardship are just some of the common reasons TTOs and their faculty frequently get short-changed.

If your post-license monitoring system is less than optimal, you are almost certainly letting real dollars slip through the cracks – dollars that could be put to good use in your office,  and dollars that your faculty inventors and university deserve.

That’s why we’ve invited three experts to show you how to create a systematic auditing process while maintaining positive relationships with licensees. Join us for an in-depth webinar filled with practical and usable takeaways:

Reap the Benefits of a Strong
Post-License Monitoring System

Along with detailed guidance on establishing a more effective and airtight monitoring program, our faculty will also outline the specific steps, after a problem comes to light, you must take to protect your IP and collect your rightful share of royalty payments. Here’s a brief look at the agenda:

  • How to set-up the post-license monitoring system
  • Audit triggers and schedules
  • Threshold questions for moving forward on post-license actions
  • How to build a “team” for carrying forward post-license actions
  • Categories of post-license actions (audits, licensing opportunities, infringement)
  • Best practices to increase your likelihood of success in post-license actions
  • Strategies for maintaining positive relationships with licensees
  • Examples/Case Studies of post-license actions

Your Expert Presenters:

Judy Ann Byrd, CPA/CFF, CIRA, MBA, Invotex Group. Ms. Byrd is a director with Invotex Group’s Intellectual Property Management & Finance practice. She has more than 20 years experience providing a variety of accounting and consulting services, including litigation, valuation and royalty compliance services related to intellectual property matters. Ms. Byrd’s intellectual property experience includes litigation-related damage valuations as well as royalty audits for IP licensors. Ms. Byrd has co-authored several articles and frequently speaks on intellectual property topics.

Scott D. Marty, JD, PhD, Ballard Spahr LLP. Dr. Marty is an associate in the Intellectual Property Department and a member of the Intellectual Property Litigation Group at Ballard Spahr.  He is also a member of the biotechnology and pharmaceutical practice teams in the Patents Group. He focuses his practice on various aspects of biotechnology patent prosecution and patent litigation. Dr. Marty has experience in all aspects of domestic and international patent prosecution, client counseling, prelitigation analysis, and litigation relating to the biotechnical, chemical, and pharmaceutical fields. Dr. Marty also has experience in working with clients in reviewing, analyzing, and evaluating intellectual property-based issues as well as performing and providing detailed financial analyses to provide a well-rounded picture of opportunities for moving forward with overall portfolio evaluations.

Jeffrey M. Sears, PhD, JD, Columbia University. Dr. Sears serves as Associate General Counsel for Columbia University. He is a member of the Office of the General Counsel’s Patent and Licensing Group, where his practice encompasses all aspects of patent law, including portfolio management, strategic counseling, licensing and post-licensing compliance, litigation, and legislative and regulatory patent matters.

Quality and Value

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