NIH Licensing Forum: Industry Perspectives On Federal Tech Transfer Licensing

August 21, 2021

NIH Licensing Forum: Industry Perspectives On Federal Tech Transfer Licensing

For this week's Tuesday Licensing Forum at 2 pm will we welcome back Gillian M. Fenton, Esq., CLP, as part of an open discussion about Industry Perspectives On Federal Tech Transfer Licensing.

Have you ever wondered what industry really thinks about some of the key aspects of licensing technology from the federal government? Or now certain portions of the licensing agreement or procedure may unexpectedly change a technology licensing relationship from "deal-maker" to "deal-breaker"? Please join us then on Tuesday at 2 p.m. as we discuss the following topics (and others you may add as time permits):
* How does industry select projects from federal labs for licensing?
* Are research or clinical collaborations needed for licensing?
* How do companies think strategically about collaborations that involve 'crown jewel' technology, such as proprietary platforms?
* How critical is patent term, foreign filing in terms of selection?
* In foreign filing, what countries are typically considered "must have" and which "optional" in license agreements?
* Federal regulations give preference towards non-exclusive patent licenses. When might non-exclusive agreements be OK for industry and when not?
* Challenges with upstream/prior licenses or other agreements when entering into an agreement with a government entity.
* Do all projects require patent protection?
* Any exclusive license from a federal lab requires a 15 day public notice and comment period. How is this perceived by industry?
* Agreements require "substantial" US manufacturing for US product sales – a problem for industry?
* Why liability and indemnity provisions are important.
* What are views on such issues as "reasonable pricing" and "march-in"?
* After a license is completed – who should then manage the patent prosecution?
* Who handles post-licensing agreement management at companies?
* How are license royalty obligations processed and paid by companies?
* How are royalty audits handled?

Our Guest:
Gillian M. Fenton, Esq., CLP, is currently President and Chair of the Board of the Licensing Executive Society (LES) (USA & Canada); she has been a member of the society since 1992. She previously served LES in a variety of roles, including as a member of the Board Executive Committee, Director for Communications and Publications, and as chair of the LES Insights Editorial Board. Gillian is presently Special Counsel for Innovation and Government Collaborations at GSK Vaccines. Her practice includes a wide variety of business development transactions, R&D collaborations and nondilutive funding agreements with U.S. Government entities (NIH/NIAID, BARDA and DARPA), all in support of the vaccines pipeline. Prior to joining GSK, Gillian was VP, Associate General Counsel & Chief Intellectual Property Counsel at Emergent BioSolutions Inc., where she founded the IP department and supported all IP aspects of the company's IPO and subsequent 9 years of growth through M&A in the vaccines, biodefense, and global health fields.

Here are the call-in & WebEx details for the Tuesday Licensing Forum:

2:00 p.m. | Eastern Daylight Time (New York, GMT-04:00) | 1 hr 30 mins

Meeting number (access code): 623 329 789

Meeting password: OTTConA