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University Technology Transfer and Licensing Agreements

Susan Zerull to speak at Strafford CLE webinar

October 11, 2022

Susan Zerull will be a panelist for the webinar "University Technology Transfer and Licensing Agreements" on October 11, 2022 from 1:00-2:30pm EDT, presented by Strafford. This CLE course will guide counsel in drafting university technology transfer and licensing agreements. The panel will discuss key contract clauses and best practices for negotiating the agreements and avoiding pitfalls unique to the university context. Please contact Director of Marketing Jessica Lister at for registration information.

Susan is Counsel in the firm's Detroit office. She joined Cantor Colburn after 25 years as in-house counsel at The Dow Chemical Company, Imation, and 3M. Her practice concentrates on patent procurement, developing intellectual property strategies, and complex intellectual property transactions. She brings a pragmatic, business focused, and global view to her practice. Susan’s technical areas of expertise include polymers, electronic materials and devices, photovoltaics, solar modules, small molecules, chemical formulations, chemical processes, and pharmaceuticals.

University technology transfer and licensing present unique challenges that can trip up counsel who aren't often involved in these deals. Counsel advising private companies on technology transfer deals with university faculty or employees must understand the ins and outs of technology transfers and licenses in the university context.

Technology transfers present financial opportunities but involve legal risks, such as potential IP infringement or the failure of related services to provide the expected value.

Private companies typically have different goals than the university when contracting technology transfers. Historically, university licensing programs focused on patent rights. However, universities assert their copyrights in software and other IP rights in the technology.

Those involved in the negotiations must beware of potential conflicts of interest with faculty or university employees who may have a financial interest in the transfer or license in addition to their university employment.

Counsel can draft and negotiate a deal in their clients' best interests by understanding the critical elements to include in agreements--and the common pitfalls involved in university technology transfers.