Description

Intellectual property that results from university research is frequently licensed (a Bayh-Dole success!) to new or existing companies for commercialization. Often faculty present interesting new concepts not yet reduced to practice that companies wish to further develop through research contracts that include the eventual right to license the technology. In both cases, nascent technology needs further development to bridge the oft-discussed "Valley of Death" through translational research. No entity is better equipped to undertake this research than the university. This workshop will examine the complex relationships that arise when universities interact in research projects that involve technology transfer.

Learning Objectives

• Participants will gain an understanding of commonly used contracting licensing approaches that address background intellectual property and new foreground intellectual property;
• Participants will explore the concept of a "Background Intellectual Property Briarpatch," understand the importance of sponsored programs office in managing the IP portfolio, and propose remedies;
• Participants will consider how to construct field of use licenses to meet the needs of sponsors, faculty, and start-up companies;
• Participants will review proprietary rights agreements for SBIR and STTR projects;
• Participants will consider the special financial arrangements and constraints (risks) in working with start-ups;
• Participants will discuss the requirements for conflict of interest disclosures and management plans.

Pre-Requisites

• Sound understanding of intellectual property terms
• Experience and/or familiarity with different types of licensing arrangements
• Exposure to proposing, negotiating, or administering university-industry research
• Familiarity with SBIR and STTR proposals and subcontracts
• Familiarity with conflict of interest policies and guidelines

Program Level:

Advanced