Negotiating Nanotech Licensing Agreements - IIPLA

Negotiating Nanotech Licensing Agreements

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About Course

About the Course:

Exploring the Potential and Challenges of Nanotechnology Licensing

Nanotechnology is brimming with potential. Nanotech-based inventions span diverse applications, including biomedicine, electronics, energy production, lithography, aerospace, and molecular robotic manufacturing. According to researchers, the market for nanotechnology-based products was projected to reach $2.4 trillion by 2015.

However, as a relatively new field, nanotechnology presents unique challenges in negotiating, drafting, and complying with licensing agreements. Licensing professionals are well-advised to allow for flexibility and include robust curing provisions in nanotech license agreements.

Key Issues in Nanotechnology Licensing Agreements:

  1. Field of Use Licensing:
    • The early stage of nanotech research impacts field of use licensing. Licensing agreements must be adaptable to accommodate ongoing developments.
  2. Risk Mitigation:
    • Neutralizing risks associated with nanotechnology through indemnification, indemnity insurance, and compliance with nanotech standards is essential for protecting all parties involved.
  3. Cross-Licensing Strategies:
    • Cross-licensing can effectively counter the patent thicket in nanotechnology, fostering collaboration and reducing legal hurdles.
  4. Mutual Cooperation Agreements:
    • These agreements enhance patent enforcement and promote mutual benefits through shared resources and cooperative strategies.
  5. Patents and Trade Secrets:
    • Combining patents with trade secrets provides comprehensive protection for nanotechnology innovations, ensuring both legal and competitive advantages.
  6. Material Transfer Agreements:
    • These agreements are crucial for commercializing nanotechnology, facilitating the legal transfer of materials necessary for development and production.
  7. Quality Variance:
    • Addressing the variance in quality and nature of nanotech inventions is vital when establishing milestones in licensing agreements.
  8. Policing Infringement:
    • The complexities of reverse engineering nanotech inventions pose challenges in policing infringement, requiring diligent monitoring and enforcement strategies.
  9. Commercialization Timetables:
    • Upscaling nanotech innovations can affect commercialization timelines, necessitating realistic and flexible planning in licensing agreements.
  10. Government Sponsorship:
    • Government-funded nanotech research can impact licensee rights, requiring careful consideration and negotiation in licensing agreements.
  11. Cost Sharing:
    • Sharing maintenance and prosecution costs between licensors and licensees ensures a balanced and fair partnership, promoting sustained innovation.

Course Leader: Dr. Sarah Rouse, Lawyer, Katten Muchin Rosenman LLP

Dr. Sarah Rouse specializes in intellectual property, focusing on patent procurement, litigation, portfolio strategy, due diligence, and client counseling. Her expertise spans medicinal chemistry, pharmaceuticals, nanoscale drug delivery vehicles, stem cell technology, gene therapy platforms, medical devices, and advanced composite materials. Dr. Rouse has extensive experience in pharmaceutical patent litigation, including ANDA and Hatch-Waxman cases.

As a co-inventor on patents related to nanomedicine, Dr. Rouse’s research contributed to the founding of Keystone Nano, a Pennsylvania biotech company, and NanoSpecialties LLC, a joint venture with the Nalco Company. Dr. Rouse is also a member of the editorial advisory board for the BNA publication Life Sciences Law & Industry Report (LSLR).

Course Length: Approx. 1.0 hour

Discover the intricacies of nanotechnology licensing and ensure your innovations are protected with expert guidance from Dr. Sarah Rouse. Secure your spot today!

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