Track C

C8 Sublicensing Income: Words Really Matter - CLE Eligible

Track: Licensing Successful Practices

Target Audience: Intermediate

Emily Kuwahara, Crowell & Moring LLP

Beth Drees, University of Utah
James McNamara, University of Massachusetts

Two economic realities point to the importance of sublicensing income provisions in agreements: Many licenses are entered into with small companies that need to do a sublicense transaction if an invention is to be sold; and the vast majority of university revenue from inventions is generated by a few inventions. How an agreement defines sublicense income can determine whether a university receives millions of dollars in payments. Back for a third year, this session will provide updates from arguments made in court and explore specific contract language, how it has been interpreted, and key questions such as: Are payments within the definition of sublicense income? How does the original license define sublicense income? And how do certain provisions create incentives for licensees to avoid paying sublicense income?

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