presenters: sean o’connor -university of washington school of law director, law, technology &...

Presenters:

Sean O’Connor -University of Washington School of Law Director, Law, Technology & Arts Group and

Faculty Director, Entrepreneurial Law Clinic

Bryce Pilz - University of MichiganAssistant General Counsel

Office of General Counsel and Office of Technology Transfer

I. Procedural Issues◦ In-house counsel’s role; speeding reviews; public v.

private university settings; structuring legal support

II. Substantive Legal Issues◦ Avoiding industry’s pet peeves; terms that make

licensees squirm; why changes to the mundane contract language matter; working with templates

III. Improving Your Relationship

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I. Procedural Issues of Working with University Counsel◦ In-house counsel’s role◦Speeding reviews◦Public v. private university settings◦Structuring legal support


No two universities are alike in how they utilize their in-house counsel to advise Tech Transfer

From embedded counsel with and part of the Tech Transfer team, to a remote OGC attorney that only occasionally advises Tech Transfer, to outside counsel

We’ll attempt to distinguish between different models and suggest ways to bridge the deficiencies in particular models


What do you want/expect?◦ Legal review of all documents?◦ Sounding board type of advice?◦ Legal advice on all parts of Tech Transfer

process?◦ Active role in negotiations?◦ Active IP advice (such as patentability advice) at

early stages of analyzing inventions?

What does your counsel want/expect?

How can you help them to help you?

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Get to know your counsel’s legal subject matter comfort zones◦ Tech Transfer covers an extremely large scope◦ Role in negotiations◦ Manager of the standard form (but little legal

review)◦ Handling disputes (e.g., inventorship disputes)

**Knowing this will help you be more efficient **


Context: Most in-house university attorneys have a rapidly evolving “to-do” list of small to medium sized tasks.◦ Receiving calls and emails throughout the day

from clients with “urgent” questions.◦ Similar to what licensing reps experience with

inventors and licensees.

So, part of the trick is to have credibility with your counsel such that your task isn’t the one that gets “bumped.”


Provide fair and honest deadlines

Think about the form in which you send materials to your counsel: What other information does your counsel need to

provide context? Develop a standard redlining procedure!!! Do you want counsel to review the whole

document, or do you have specific questions?


FOIA – state FOIA laws will apply to public schools; probably not privates.◦ Requires specific language in NDA’s.◦ Impacts ability to license trade secrets.◦ If you work at a public school, you probably want

to have a basic understanding of your state’s FOIA laws and exceptions so you have talking points for negotiations with licensees.


State constitutional restrictions will apply to public schools to greater extent.◦ Choice of law/forum, indemnity, how and whether

the university can hold stock, etc.◦ Try to have a general understanding of the absolute

“no’s” based on constitutional restrictions. E.g., if you know you cannot accept another state’s

choice of law/forum, this can save you and counsel time.

◦ Understand your fall-back provisions. E.g., you cannot accept another state’s choice of

law/forum, but your deals can remain silent on that issue.



Public v. Private University Public v. Private University Systems Systems (cont.)(cont.)

Many states have ethics laws regarding state employees that can limit what role faculty inventors can play in external firms

State universities may also have greater restrictions on how state assets can be disposed

State universities that are state agencies may have some ability to rely on sovereign immunity for allegations of IP infringement

Attorney “embedded” within Tech Transfer

Attorney located remotely from Tech Transfer

Hiring of outside counsel, patent agents


II. Substantive Legal Issues of Working with Univ. Counsel◦Avoiding industry’s pet peeves◦Terms that make licensees squirm◦Why changes to the mundane contract

language matter◦Working with templates


“University Tech Transfer Offices take too long.”

“University Tech Transfer Offices are inflexible.”

““Silo’d” universities force licensees to work with different departments.”


Bayh Dole Language

Reps & warrants, indemnification

“Patent Rights” – future IP

Patent prosecution control


General points – ◦ Develop good talking points for these issues so

the licensee can understand the university’s perspective.

◦ If licensee is legitimately concerned, understand if you have fall-back language that might appease them.


Example #1) Inventor assignment language difference between present immediate

conveyance and future contingent conveyance language

“I hereby assign” vs. “I hereby agree to assign” seems quite minor in both actual language and

concept, but see Stanford v. Roche, 583 F.3d 832 (Fed. Cir. 2009).


Example 2: Reps & Warrants Licensee arguments:

◦ 1) Everyone does this.◦ 2) Just say “certify.”◦ 3) Just rep/warrant to the “best of your

knowledge.”◦ 4) “not actually aware of any contract that

conflicts with rights granted in this license.”◦ 5) “has power and authority to enter into this

Agreement.”


Example #3) indemnification, defense, hold harmless

Licensee arguments:◦ Don’t need to say all three, just say

indemnification.

Point: indemnification, defense, and hold harmless are distinct and each are important.


Templates are essential to efficiency at Tech Transfer Offices.

You need to understand which standard language is “wants” v. “needs.”

Have talking points for language that must remain.


Fall-back language: great way to have some flexibility; shows licensee you are trying to work with them.

Ex) Indemnification carve-out. Licensee shall not be obligated to indemnify University under this

Paragraph after any unappealed or unappealable order of a court of competent jurisdiction holds that the claim was legally caused solely by the gross negligence or willful misconduct by University. The applicability of Paragraph X shall not be affected for any time period prior to any such order referred to in the prior sentence.


Ex) Future IP University will employ its normal business practices to attempt to

notify Licensee of any invention report made by University Professor X to the University Office of Technology Transfer that constitutes an improvement to the Patent Rights if: (i) University owns all right, title, and interest in the reported invention; (ii) Professor X is the sole inventor of the reported invention; (iii) the invention report references the Patent Rights or University’s OTT File #YYY; (iv) the reported invention was not sponsored by any third party and such notification would not conflict with any other contractual or other legal obligation of University; and (v) Licensee is in good standing with the terms of this Agreement and any other obligation owed to University or Professor X.


Copyright 2010 Technology Transfer Tactics - www.technologytransfertactics.com - 877-729-0959 23

Break for Q&ABreak for Q&A

III. Improving Your Relationship with University Counsel


Problem: Counsel is too risk-averse.

Solution: Make the risk acceptance issue a non-legal issue.◦ Involve business decision-makers.◦ Establish that the university understands the risks but is

willing to accept some additional risk here for business reasons.

◦ Need to have business decision-makers willing to do this.◦ Explain what you want to do, why it’s important.◦ Don’t challenge counsel’s advice, but instead ask if counsel

can point out the least risky way for you to do something.◦ May help to benchmark other schools.


Problem: Disconnect with counsel.

Solution: Help counsel make their job more interesting.◦ Do they miss being involved with the technology and

inventors? (Bring them to inventor meetings for cool technology.)

◦ Frame things as “new initiatives.” E.g., analyzing school X’s model start-up license and seeing if

counsel can draft one for your school.◦ Get counsel to feel like they are part of the team

(presentations, committees, etc.)◦ Let them know when things work out!


Problem: Counsel makes things seem too complicated.

Solution: Ask specific questions in order to get specific answers.◦ Request specific criteria for when you should be

concerned about an issue.◦ Ask for a flow chart or decision matrix (or you draft

one and run it by counsel).◦ Frame the issue as trying to save attorney time by not

having to involve him or her constantly.


Problem: One side feels threatened by the other.

Solution: Recognize at times you want to do their job and they want to do yours.◦ There are areas of overlap, so try to learn from one

another.◦ If counsel is making changes to language you drafted,

ask him or her so you can learn from suggestions.◦ Each of you should learn something from each deal.


Problem: Counsel doesn’t have expertise in a needed area.

Solution: Raise the issue!◦ Frame the issue as needing “subject matter expertise”

rather than counsel’s incompetence.◦ Point out that Tech Transfer sees a near-term need for

legal expertise related to ____, and inquire about how best to get it. (Many attorneys will relish the opportunity to get up to speed on a new subject matter.)


Problem: Counsel tells you that issue is not a “legal issue.”

Solution: It is true that difficult issues aren’t necessarily “legal issues”.◦ But, if counsel feels they are part of the team, may be

more likely to give practical or business advice.◦ Frame question as, “if we do this, what are the risks”?


Meet Your Presenters:Meet Your Presenters:Sean O’Connor University of Washington School of Law Director, Law, Technology & Arts Group Faculty Director, Entrepreneurial Law Clinic Professor of Law Professor O'Connor specializes in intellectual property and business law involving biotechnology, cyberpace/information technology, and new media/digital arts. He is Of Counsel to Seed IP Law Group. Professor O'Connor lectures and publishes on IP and business law around the world. He began practicing law at major international business and

technology law firms in New York and Boston, and was General Counsel to Rhizome.org from 2000-2006. Professor O'Connor began his academic career at the University of Pittsburgh before joining the faculty at the University of Washington School of Law in 2003. He was Visiting Professor and Kauffman Fellow in Law & Entrepreneurship at University of California Berkeley School of Law in 2007. He has written numerous articles and book chapters, and is co-author of Genetic Technologies and the Law (with Patricia Kuszler & Katherine Battuello; Carolina Academic Press 2007). Professor O'Connor is admitted to practice in Washington, New York and Massachusetts. [email protected]

Bryce Pilz University of MichiganAssistant General CounselOffice of General Counsel and Office of Technology TransferBryce Pilz joined the Office of General Counsel in 2006, working on patent and copyright licensing and litigation matters mostly involving software, medical devices, and engineering technologies. Some of Bryce’s specific work includes: counseling the Office of Technology Transfer on intellectual property and licensing matters; advising the College of Engineering and Center for

Entrepreneurship on student intellectual property and entrepreneurship issues; responding to subpoenas related to patent matters; and addressing and litigating intellectual property and research disputes. Prior to joining the University, Bryce was an associate at Kirkland & Ellis LLP in Chicago where he gained significant experience in patent litigation and transactional matters encompassing a wide variety of technologies. Bryce also clerked for Judge Amy J. St. Eve in the Northern District of Illinois. Bryce received his J.D. from the University of Michigan Law School in 2000 and his B.S. in Mechanical Engineering from the University of Michigan College of Engineering in 1997. [email protected]

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www.technologytransfertactics.com - 877-729-0959

presenters: sean o’connor -university of washington school of law director, law, technology &...

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