Tech Transfer Central

Key Challenges in Drafting IP Licenses

A Technology Transfer Tactics Distance Learning Collection
Format: On-Demand Video, DVD, and PDF Transcript

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Price: $349
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Key Challenges in Drafting IP LicensesExperts provide best practice drafting guidance on three sensitive and critical issues in IP licensing agreements

Carefully defining rights to improvements, IP valuation, and audit rights are three of the trickiest aspects of drafting license agreements that protect your organization from future disputes as well as reductions in revenue due to licensee interpretation of ambiguous contract language.

Careful drafting of these terms — using exacting language that leaves no room for error, omission, or re-interpretation — minimizes the chances of a host of future complications, including litigation, that can wreak havoc on your TTO’s relationships with partners and licensees. That’s why we’ve created this detailed distance learning collection:

Key Challenges in Drafting IP Licenses
A Technology Transfer Tactics Distance Learning Collection


With the release of Key Challenges in Drafting IP Licenses, Technology Transfer Tactics zeroes in on these three critical components of a license agreement: rights to improvements, calculation of apportionment and EMVR, and audit terms.

Here are the individual session details:

Session One:
Drafting Improvements Clauses in University IP Licenses

Led by IP law experts Larry Schroepfer, Michael Alder, and David M. Brown, this 90-minute program will help you fully understand improvements and arm yourself with solid negotiating and drafting skills in this often debated area:

  • Defining improvements
  • Should your improvements clause address IP, know-how, or both?
  • The most misunderstood and often overlooked terms leading to disputes or IP losses
  • Drafting improvements terms:
    • How specific is too specific when it comes to defining terms?
    • Exclusive vs. non-exclusive rights to improvements?
    • Assigning a time frame to improvements rights
    • How to draft royalty adjustments
    • Who pays to register improvements with the patent office?

Session Two:
Proper Calculation of Apportionment and Entire Market Value in University Patent Licenses

Top industry expert Krista Holt reviews the recent changes in case law that impact reasonable royalty calculations, and how concepts like apportionment, entire market value, and smallest saleable unit can be effectively addressed both in license agreements and, if necessary, in court. Also discussed:

  • A review of pertinent case law including:
    • Ericsson, Inc. v. D-Link
    • CSIRO v. Cisco
    • VirnetX, Inc. v. Cisco
  • The smallest saleable unit: what it is, how to find it, and when it applies
  • 10 different ways to calculate apportionment
  • Strategies for negotiating and translating the royalty rate and potential damages within the license
  • Examples of apportionment and EMVR language done right… and samples that were poorly drafted
  • Best practices for calculating reasonable royalty damages
  • Tips for making your royalties easier to track and easier to enforce

Session Three:
Drafting Iron-Clad Royalty Audit Terms and Conditions for University IP Licenses

Royalty audit expert Matthew Hurewitz shares his best practices and experience with audit terms in this detailed, practical session. Here’ a brief look at what he covers:

  1. Assessing and improving your current contract language with an eye toward potential future disputes
  2. Including reasonable penalties if the contract is violated
  3. Specific licensee documents your must have the right to audit
  4. Routine audits versus “red flag” audits
  5. Circumstances under which licensee should bear audit costs
  6. Common mistakes in language and terms that can lead to disputes

To make this outstanding collection most useful to you and your organization, with your purchase you receive:

  • All programs on DVD
  • On-Demand Video access to all programs
  • PDF Transcripts to all programs
  • Access to all of the original program materials including slideshows and handouts

You can share it with your entire staff when and how you choose — all for the low price of $349

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