Tech Transfer Central

Sublicensing and Enforcement Terms in Patent License Agreements: Expert Guidance on Drafting and Negotiation

A Two-Session Distance Learning Collection
Format: On-Demand Video/Transcript, or DVD
Price: $279

Two in-depth programs filled with critical licensing guidance for just $279a savings of $125 off the programs priced separately

Universities and their tech transfer offices must be prudent when negotiating terms for agreements granting rights to third parties in university-developed inventions. Among many considerations are sublicensing rights, the scope of those rights (e.g., geographic and field of use), and the university’s desire to be involved in, to control, or to avoid future litigation.

The terms you craft in your license agreements can help you and they can haunt you – how you negotiate and draft them will have a massive impact on not only sublicense revenue, but also on your ability to maintain adequate control over your IP and over your involvement in costly legal actions.

That’s why we’ve produced this two-program distance learning collection.

Sublicensing and Enforcement Terms in Patent License Agreements

Sublicensing and Enforcement Terms in Patent License Agreements: Expert Guidance on Drafting and Negotiation features two strategy-filled sessions that provide a detailed roadmap for drafting and negotiating rights in these critical areas.

Share these valuable programs throughout your organization without limitation, whenever and wherever the need arises

Here are some brief details of each program in the collection – click on the titles for more in-depth program and faculty details:

Best Practices in Negotiating, Drafting, and Managing Sublicenses

Session leader: Kristie D. Prinz, Esq., Prinz Law Office

Get best practices in drafting and negotiating sublicensing rights, and ensure royalties and other revenues that stem from those rights are properly tracked. Plus, hear about:

  • Defining the scope of a licensee’s right to sublicense
  • Structuring royalty payment obligations to maximize potential sublicensing revenues
  • Non-royalty revenue opportunities for subslicenses
  • Negotiating terms that minimize sublicensing liability risks
  • Defining the relationship between licensor and sublicensee after the termination of the license
  • Strategies to maintain oversight over sublicensing relationships
  • Effective management of sublicensing revenue collection
  • Avoiding common mistakes and potential sublicensing pitfalls

Considerations for Negotiating and Drafting Enforcement Terms in IP License Agreements

Session leaders: Tia Fenton and Jeff McIntyre, Oblon, McClelland, Maier & Neustadt, LLP

This program will help to guide TTOs and legal counsel in drafting agreement terms guide TTOs and legal counsel in drafting agreement terms to and avoid involuntary joinder and in understanding the legal issues for those bringing infringement suits without participation from “necessary parties.” Specific agenda items include:

  • Legal concepts governing transfer of rights to third parties
  • Impact of agreement language used on enforcement rights 
  • University involvement in enforcing patent rights in the U.S. 
  • Varying levels of rights a university can grant a third party
  • Sovereign immunity as a shield to joinder
  • Assessing “implied obligation” and agreement to cooperate
  • Federal Rule of Civil Procedure 19 (Rule 19) in patent litigation and its correlation to the level of rights granted
  • The Federal Circuit’s Gensetixruling and what it illustrates about significant agreement language
  • A practical approach to navigating the tension between rights granted and Rule 19

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

  • On-Demand Video access to all programs
  • Transcripts to all programs
  • Access to all of the original program materials including slideshows and handouts for attendees
  • Note: A DVD copy of the collection is available for an additional $50.

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