Track B

B6 Traps for the Unwary: Strategic Leveraging for University IP Bundling and Multi-field Licensing *CLE Eligible

Track: Licensing Successful Practices

Target Audience: Advanced

Stephen B. Barone, Lathrop & Gage LLP

Justin Anderson, Wisconsin Alumni Research Foundation (WARF)
Halina S. Dziewit, Lathrop & Gage LLP
Nathan Hoffmann, University of Illinois, Urbana-Champaign

Licensing of intellectual property (IP) rights in multiple fields of use expands the scope of opportunities for commercialization while raising practical issues for IP stakeholders, thus requiring contractual approaches for optimizing value and managing sources of risk. These issues loom large particularly in the context of commercializing IP for pioneering university discoveries having critical implications across broad classes of industries. Join us for an interactive discussion of practical strategies for multiple field licensing and IP bundling to increase revenue opportunities and commercial impact for university technology. The session will highlight various approaches for successfully negotiating and drafting exclusivity and field of use provisions, including pros and cons for different field definition approaches and contract language to clearly delineate and preserve opportunities for licensing into diverse technical fields, products and/or industry sectors. Practical issues and war stories involving risks associated with competing interests of multiple licensees, conflicts of interests, managing freedom to operate, diligence, dispute resolution and attorney client privilege will be surveyed. Portfolio building approaches to facilitate multiple field licensing and IP bundling will also be discussed.


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