As a result of our broad experience in this area, we have garnered substantial expertise in negotiating a wide variety of biosciences and "high-tech" technology transfer agreements with numerous US and certain international research institutions and universities, particularly in the biosciences industry. Some of the institutions with which we have had experience in negotiating such technology transfer agreements include Allegheny-Singer Research Institute, Arizona State University, University of Alabama, Baylor University, Centers for Disease Control & Prevention ("CDC"), Columbia University, Duke University, Emory University, University of Florida, Institute of Gustav Roussy, Georgia Institute of Technology, University of Georgia, University of Massachusetts, North Carolina State University, Ohio State University, Stanford University, Texas A&M, University of Texas (MD Anderson), University of Texas Medical Branch, Vanderbilt University and Yale University.
Our experience ranges from the handling of exclusive option agreements for the licensing of technology, exclusive and non-exclusive license agreements for patented technology and know-how, material transfer and testing agreements, sponsored research and gift agreements, and clinical trial agreements.
Key to many of these type agreements are issues on which we regularly advise our clients, such as the definitional scope of the technology licensed; rights to improvements; reach-thru licensing; royalty rates and adjustments thereto for combination products, anti-stacking, multiple products and use of non-patented licensed technologies, as determined on a country-by-country basis; annual maintenance fees, minimum royalties, milestone payments and sublicensing fees, along with the related adjustments and carve-outs; patent fees and costs; division of infringement awards; pivotal termination clauses;
assignment provisions; representations and warranties; due diligence requirements and equity “kickers.”
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