Negotiating Nanotech Licensing Agreements




About the Course:

Nanotechnology is chalk-full of potential. Nanotech-based inventions are found in end applications as diverse as biomedicine, electronics, energy production, lithography, aerospace and molecular robotic manufacturing. According to researchers, the market for nanotechnology-based products is projected to be $2.4 trillion in 2015.

However, the fact that nanotechnology is a relatively new field presents challenges when negotiating, drafting, and complying with licensing agreements. Licensing professionals may be well-advised to allow for more wiggle-room and to include more robust curing provisions in nanotech license agreements.

The following are among the unique issues that must be considered when negotiating nanotech licensing agreements:

  • How the early stage of research of nanotech affects field of use licensing
  • How to neutralize risks associated with nanotech through indemnification, indemnity insurance and compliance with nanotech standards
  • How cross-licensing can counter the patent thicket in nanotechnology
  • How mutual cooperation agreements can lead to better patent enforcement
  • How patents can be used most effectively in conjunction with trade secrets in protecting nanotechnology
  • The role of material transfer agreements in commercializing nanotechnology
  • How variance in quality and nature of nanotech invention should be addressed in establishing milestones
  • How difficulties in reverse engineering affect policing infringement
  • How difficulties in up-scaling nanotech affect commercialization timetables
  • How government sponsorship of nanotech research can affect licensee rights
  • How maintenance and prosecution costs can be shared between licensors and licensees

Course LeaderDr. Sarah Rouse, Lawyer, Katten Muchin Rosenman LLP

Dr. Rouse concentrates her practice in intellectual property, with a particular focus on patent procurement, patent litigation, portfolio strategy and management, due diligence and client counseling. Her experience includes drafting and prosecuting patent applications and analyzing patentability, validity, and infringement matters in areas of technology that include medicinal chemistry, pharmaceuticals, nanoscale drug delivery vehicles, stem cell technology, gene therapy platforms, medical devices and advanced composite materials. In addition, Dr. Rouse has experience in pharmaceutical patent litigation, including ANDA and Hatch-Waxman based litigation.

Dr. Rouse is co-inventor on issued patents and pending patent applications directed to nanomedicine. In addition, her research led to the formation of Keystone Nano, a Pennsylvania biotech company that partners with health care companies to speed market launch of nano-enabled therapeutics and NanoSpecialties LLC, a joint venture company between Keystone Nano and the Nalco Company (NYSE:NLC) that creates new products with nano-features for industrial markets.

Dr. Rouse is currently a member of the editorial advisory board for the BNA publication Life Sciences Law & Industry Report (LSLR).

Course Length: Approx. 1.0 hours

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