Greater Boston Chapter

Chapter Homepage

Sublicensing Issues in Technology Transfer and Licensing Presentation (PDF)
Sublicensing Issues in Technology Transfer and Licensing Slide Show (PDF)

Licensing Executives Society
Boston Chapter Meeting

Thursday, April 8, 2004

Sublicensing Issues In Technology Transfer and Licensing

Sublicensing issues, while often ignored or dealt with only superficially at the term sheet stage, can become among the most difficult to resolve once negotiations on a definitive license agreement commence. This is due, in part, to the fact that this issue brings to the surface several fundamental tensions between the licensor and the licensee.

Among the issues that the speakers will address are: the need for consent to grant sublicenses; survival of sublicenses if the underlying license terminates; formulas for sharing sublicense revenues with the licensor; anti-stacking issues; and sublicensing vs. “have made” rights. Suggested compromise language will be proposed for many of the issues as to which the licensor and licensee have differing positions.

Speakers

We are fortunate to have two great speakers providing us with their experiences and guidance on how to handle the tricky issues surrounding sublicensing.

Andy Anderson is a partner at the law firm of Palmer & Dodge LLP where he concentrates his practice on transactions involving intellectual property — especially biotechnology licenses and collaborations, software and Internet agreements, technology transfer from research institutions, and international licensing and strategic partnerships. He manages Palmer & Dodge’s trademark practice, and also provides advice relating to research conflicts of interest. Mr. Anderson has negotiated numerous collaboration, sponsored research and license agreements in diverse fields. He has also advised several universities and other research institutions on their intellectual property and technology-transfer policies.

Carolyn Sullivan Bektas, Counsel at the law firm of Palmer & Dodge LLP, concentrates her practice in the life sciences, including the biotechnology, biomedical device and pharmaceutical fields. She has extensive experience structuring and negotiating technology licensing transactions, sponsored research and collaboration agreements, and strategic partnership and alliance agreements. Before joining Palmer & Dodge, Ms. Bektas was Senior Counsel at Millennium Pharmaceuticals where she was responsible for structuring, drafting, negotiating, and closing major licensing and technology transactions. Ms. Bektas supported Millennium's alliance management activities with a number of its pharmaceutical company partners, and she provided legal guidance to the strategic business team managing Millennium's inflammation franchise.