Now It’s Time to Play: “Deal Breakers” in Federal Lab License Agreements!

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Presentation transcript:

Now It’s Time to Play: “Deal Breakers” in Federal Lab License Agreements!

Deal or No Deal? Howie’s Question No. 1: “My company wants to manufacture the federal technologies we are to license from a federal lab in a plant outside the United States.” Deal or No Deal?

Howie’s Question No. 2: “I’d like to have an exclusive license that’s fully exclusive to my company in all fields of use where we would be the only one that could use the Federal Lab’s patents.” Deal or No Deal?

Howie’s Question No. 3: “As a small firm in this economy, my budget is very tight this year. I may not have the funds you expect for upfront license and patent expense reimbursement payments.” Deal or No Deal?

Howie’s Question No. 4: “I’d like to have a license to patents and materials in order to complete my SBIR project but can’t afford to pay anything to the tech transfer office.” Deal or No Deal?

Howie’s Question No. 5: “As a small firm, I’m planning to get a large corporate partner as sublicensee. Since this is “my business”, I don’t want to share the details with the Federal Lab!” Deal or No Deal?

Howie’s Question No. 6: “My business needs the Federal Lab patents I’ve licensed enforced against any infringers! We would like to do this since we have so much at risk here with this new product.” Deal or No Deal?

Howie’s Question No. 7: “It’s just a non- exclusive license for a group of Federal Lab patents this time! I don’t think I should have any diligence requirements in the license”. Deal or No Deal?

Howie’s Question No. 8: “I would just like to have a license to the Federal Lab patents and do my own R&D. I don’t need a CRADA (Cooperative Research and Development Agreement) with the labs of the inventors.” Deal or No Deal?

Howie’s Question No. 9: “My license application shows how I’m going to hire the inventors as consultants and have them on the Scientific Advisory Board of my new firm when I get the license.” Deal or No Deal?

Howie’s Question No. 10: “If we ever have any disputes about this license agreement the company and Federal Lab should be subject to binding arbitration to solve the problem.” Deal or No Deal?

The Final Word & Audience Questions Yet more negotiations … Deal or No Deal?