Program agenda:
1). How did we get here? A brief overview of the various scenarios that can lead to a relationship breakdown and the need to have a robust enforcement strategy in place, including:
- Payment issues
- Failure to develop or market the technology as agreed
- Infringers in your licensee’s market
2). Where do we begin? Taking a step-wise approach prior to initiating litigation:
- Identifying and quantifying the problem
- Notifying necessary TTO, university leadership, and General Counsel personnel
- Confronting the licensee
- Retaining outside counsel
3). Managing the process and expectations
- Understanding your claim — is there really a dispute?
- Evaluating your claim and that of your licensee/the infringer
- Negotiation and communication with licensee’s/infringer’s decision-makers
- Setting expectations and securing enforcement buy-in from all stakeholders
- Financial and non-financial costs and potential returns of enforcement
4). The spectrum of resolution options and the pros and cons of each
- Informal settlement discussions
- Mediation
- Arbitration
- Trial
Every so often, there comes a time when tensions arise between a university TTO and its licensee. Whether it’s due to a communication snafu, license compliance, payment issues, or performance problems, most of the time these disputes can be resolved quickly with little impact to the relationship — particularly for TTOs with an effective enforcement plan in place. However, when discussions fail to bear fruit, there are times when the university’s investment, reputation and the future of the technology demands that a dispute escalate to the point of litigation. Will you be prepared?
Many TTOs try to avoid conflict with their licensees believing that pressing a dispute will harm the university’s reputation or the relationship between the licensee and the university researcher/inventor. Unfortunately, the result is usually lost revenue for the university and diminished respect for the university’s IP. In fact, as you’ll discover in this eye-opening program, raising a legitimate dispute with the licensee’s decision makers can result in the recovery of unpaid royalties and often lead to an improved and expanded relationship between the university and its licensees and potential licensees.
Join our team of expert attorneys from Fish and Richardson for this detailed program that will explore real-world strategies for addressing disputes with licensees and infringers alike. Proven best practices for navigating the complexities of enforcement — from identifying problems to negotiating solutions to full-blown litigation — will be discussed.
