Track F

F6 License Executed! No, You're Not Done

Track: Administrative & Operations

Target Audience: All Audiences

Halina S. Dziewit, Lathrop & Gage LLP

Jennifer Folger, Michigan State University
Amanda Ottaway, North Carolina State University
DawnMarie Portoff, Yale University

There is plenty still to be considered after the license is executed — from simple compliance of licensing terms to the more complex determination of when to terminate the license. A panel of experts will address the common issues that arise after a license has been granted, both exclusive and non-exclusive. They will delve into the paying of royalties, pursuing audit rights and dealing with the enforcement or defense of intellectual property (IP). Also discussed will be meeting flow-down requirements of Bayh-Dole. This session will also cover permitting assignment or sub-licensing, understanding the scope of indemnification, and the execution of a meaningful marketing plan. Lastly, the panelists will discuss definition of reasonable steps in the commercialization of the licensed technology, licensor’s ability to facilitate the objectives of the commercialization effort by the licensee, and defining commercialization success.

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