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Tech Transfer Roundup: How To Protect Downstream Rights

 
• By Joseph Haas

A review of tech transfer deals over 10 years shows that licensees often protect their value positions to limit royalties paid out to licensors. Meanwhile, licensors often protect their future rights with language recognizing that additional parties may be involved in producing a final product.

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Risks to capturing fair value can surface for both licensors and licensees in a technology transfer deal, because the out-licensing of academic intellectual property to a start-up can be just the first part of a long, winding process before a final product is brought to market. By the time commercialization begins, the final product may comprise multiple IP components and additional parties.

Sean Sheridan, a principal with Charles River Associates, decided to review a subset of tech transfer deals over a 10-year period to determine just what types of contract provisions both...

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