Tech Transfer Central

Taking Legal Action Against Your Licensee: What TTOs Need to Know

Format: On-Demand Video/Transcript, or DVD
Originally presented: August 27, 2019

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Price: $197
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Every so often, there comes a time when tensions arise between a university TTO and its licensee. Whether it’s due to a communication snafu, license compliance, payment issues, or performance problems, most of the time these disputes can be resolved quickly with little impact to the relationship — particularly for TTOs with an effective enforcement plan in place. However, when discussions fail to bear fruit, there are times when the university’s investment, reputation and the future of the technology demands that a dispute escalate to the point of litigation. Will you be prepared?   

Many TTOs try to avoid conflict with their licensees believing that pressing a dispute will harm the university’s reputation or the relationship between the licensee and the university researcher/inventor. Unfortunately, the result is usually lost revenue for the university and diminished respect for the university’s IP. In fact, as you’ll discover in this eye-opening program, raising a legitimate dispute with the licensee’s decision makers can result in the recovery of unpaid royalties and often lead to an improved and expanded relationship between the university and its licensees and potential licensees.  

This detailed webinar will explore real-world strategies for addressing disputes with licensees and infringers alike.  Proven best practices for navigating the complexities of enforcement — from identifying problems to negotiating solutions to full-blown litigation — will be discussed. Please join Technology Transfer Tactics’ Distance Learning Division and its team of expert attorneys from Fish and Richardson for this important program:

Taking Legal Action Against Your Licensee: What TTOs Need to Know

Here’s a brief look at the program agenda:

1). How did we get here? A brief overview of the various scenarios that can lead to a relationship breakdown and the need to have a robust enforcement strategy in place, including:

  • Payment issues
  • Failure to develop or market the technology as agreed
  • Infringers in your licensee’s market

 2). Where do we begin? Taking a step-wise approach prior to initiating litigation:

  • Identifying and quantifying the problem
  • Notifying necessary TTO, university leadership, and General Counsel personnel
  • Confronting the licensee
  • Retaining outside counsel

 3). Managing the process and expectations

  • Understanding your claim — is there really a dispute?
  • Evaluating your claim and that of your licensee/the infringer
  • Negotiation and communication with licensee’s/infringer’s decision-makers
  • Setting expectations and securing enforcement buy-in from all stakeholders
  • Financial and non-financial costs and potential returns of enforcement

4). The spectrum of resolution options and the pros and cons of each

  • Informal settlement discussions
  • Mediation
  • Arbitration
  • Trial

Meet Your Presenters:

Todd MillerTodd Miller
Fish & Richardson P.C.

For the past twenty years, Todd has helped clients in the medical device field to achieve their business, patent litigation and related intellectual property objectives. He has represented innovative, technology driven corporate and university clients whose technologies improve the lives of patients with renal, cardiac, orthopedic, vision care and other medical needs. Todd brings a refined and pragmatic approach to litigation management, which permits him to run complex cases on budget while delivering exceptional results for his clients. He has a proven track record working with university clients, having secured several very large settlements against infringers and licensees alike. As a licensed patent attorney, Todd has particular expertise in the coordination of post-grant review and litigation strategies.  He also has substantial experience negotiating and structuring complex patent licensing deals and efficiently and effectively resolving licensing disputes.

Corrin DrakulichCorrin Drakulich
Principal and Litigation Group Leader
Fish & Richardson, P.C.

Corrin is a trial lawyer specializing in patent litigation and counseling clients in all aspects of intellectual property. She partners with clients large and small to help them protect and advance their innovations in the areas of biotechnology, medical devices, pharmaceuticals, healthcare technology, and automotive technology. Corrin’s many long-standing relationships with corporate and university clients alike are marked by her deep commitment to understanding the client’s business and long term objectives and crafting creative and practical solutions to achieve those objectives. As a faculty member for the Patent Resources Group and a regular guest lecturer at Emory Law School, Corrin also devotes a substantial amount of time to teaching a wide variety of topics ranging from patent law basics to advanced patent litigation strategies.

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