Negotiating Collaborative Research Agreements


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About the Course:

Inventors are full of trepidation when negotiating Collaborative Research Agreements with large companies. They are terrified that their cherished technology will be stolen. There is also a high level of anxiety when corporations negotiate CRAs with universities. These companies often believe that they will be gauged on the royalty rates if the research proves fruitful.

Understanding key aspects of CRAs will reduce the stress associated with negotiating research or development agreements.

The following are among the issues that are discussed during this course:

  • How should companies negotiate with faculty members versus tech transfer officers?
  • What is the importance of negotiating for access to the research?
  • How should non-disclosure agreements be crafted?
  • What do licensors need to know about tech transfer officers charging for overhead? What is included in such formulas?
  • Who controls the patent prosecution process?
  • How to negotiate for preferential royalty rates and rights of first refusal?
  • How to secure / deprive your counterparts (of) background, related and future intellectual property?
  • How to structure and price options?

Course Leader: Charles A. Weiss, Partner, Kenyon & Kenyon

Charles A. Weiss concentrates his practice on technology-driven litigation, counseling, and transactions. He also counsels clients on questions of patent validity and infringement and provides a litigator’s perspective on prosecution matters.

Mr. Weiss primarily works in the pharmaceutical, chemical and biotechnology areas. He has litigated patent, trade secret, and false advertising cases involving matters such as the expression of recombinant proteins, controlled-release pharmaceuticals, medical diagnostic agents, endocrine and hormone products, nutritional supplements, food chemistry and processing, high-caustic detergents, pipe liners, and tube fittings. He also has substantial experience in the investigation of product counterfeiting and pursuit of those responsible.

Mr. Weiss also enjoys a diverse nonlitigation practice, with an emphasis on supporting transactions in which a substantial value is attributed to a party’s patent position, such as its ability to exclude competitors or to bring its product to market free of meritorious infringement claims by others. He has negotiated and drafted hundreds of licenses and other agreements, including commercial collaboration, joint research, and product acquisition agreements.

Mr. Weiss is an adjunct professor at New York Law School, where he designed and teaches a course on patent litigation and analysis.

Course Length: Approx. 1.5 hours

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