Track F

F5 Sublicensing Income: The Words Really Do Matter *CLE Eligible

Track: Licensing Successful Practices

Target Audience: Intermediate

Gregory Call, Crowell & Moring LLP

Sybil A. Lombillo, Mount Sinai Innovation Partners
Emily Waldron Loughran, University of California, Los Angeles (UCLA)

Two economic realities point to the importance of sublicensing income provisions in license agreements: many licenses are entered into with small companies that will need to do a sublicense transaction if an invention is to be marketed and sold; and the vast majority of university revenue from inventions is generated by just a few inventions. How an agreement defines sublicense income can therefore determine whether a university receives millions or even hundreds of millions of dollars of payments. This presentation will build on last year’s program to explore specific contract language and how contract language has been interpreted in the courtroom. Several key questions will be addressed. Is there a sublicense and can the licensee avoid sublicense provisions by terming a subsequent transaction something other than a sublicense? Are payments related to the sublicense and can a licensee avoid sublicense income provisions by allocating payments to the provision of something other than a sublicense of technology? Are payments within the definition of sublicense income and how does the original license define sublicense income? Join this session and discover how to address these key questions regarding sublicensing income provisions.

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