Track A

A4 Are You Wasting Too Much Time on Non-license Agreements?

Track: Nuts and Bolts of Technology Transfer

Target Audience: Advanced

Hannah Dvorak Carbone, California Institute of Technology (Caltech)

Alan R. Bentley, Vanderbilt University
Scot G. Hamilton, Columbia University
Julie M. Watson, Marshall, Gerstein & Borun LLP

Tech transfer is all about negotiating license agreements – or is it? Many TTOs spend at least as much time on agreements that aren’t licenses. Inter-institutional agreements (IIAs) and non-disclosure agreements (NDAs) especially can be massive time sinks. IIAs tend to be low on everyone’s priority list until and unless the jointly-owned IP is to be licensed – and then they need to be done quickly, and to the licensee’s satisfaction. NDAs, which should be an early pro forma step in the licensing relationship, too often get bogged down in negotiations over differences in expectations, stalling progress on the deal itself. Despite a variety of approaches and initiatives to reduce the transaction time, universally-accepted terms and templates have not yet emerged. Can the remaining seemingly “irreconcilable” philosophical differences be reconciled? Are there common elements we can all agree on? Join us for a discussion about initiatives to develop and adopt standard IIA and NDA templates, to see if we can work toward reconciling the “irreconcilable differences.” Please bring your own opinions and “war stories”!

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