Licensing and technology transfer: An academic perspective

CINF 62

Tena Herlihy, tenazara@mit.edu, Technology Licensing Office, MIT, Room NE25-230, Five Cambridge Center, Kendall Square, Cambridge, MA 02142
Licensing and technology transfer agreements between the academic and industrial sectors are increasing in number. It is important to understand the nature and obligations of academic institutions and thus their needs, policies, and limitations. This presentation will cover strategies for handling a number of issues that often arise when negotiating patent licenses with academic institutions. A brief history of the Bayh-Dole Act will be given as a background to how universities came to be involved in technology transfer, followed by a discussion of topics that are unique to the academic environment. For example, universities are often very limited in the representation and warranties they can give. Also, unlike commercial agreements, there will always be retained rights under an academic agreement, and the agreement is likely to include due diligence provisions to make sure the technology is developed. The presentation will conclude with a report on likely changes in academic agreements as a result of recent case law.