Every tech transfer office knows its role is largely one of service to faculty, assisting researchers in moving their innovations through the commercialization pipeline. Typically, this means the researcher sees the TTO as an ally and advisor, often assisting with everything from disclosure to patent to start-up creation and funding. But, the feelings of “we’re in this together” can quickly turn sour when it comes time to negotiate licensing terms or the university’s equity stake in the start-up. And it can get downright nasty when things get real in term of money, leadership, control, and exit.
Many universities rely on boilerplate contracts for ease, quickness, and transparency, but start-ups are as unique as the inventions they are founded upon. And, while some terms and conditions are prime for cut-and-paste, this overall approach brings great risk of misunderstandings that can lead to bad blood and costly litigation.
That’s why Technology Transfer Tactics’ Distance Learning Division is teaming up with K. Lance Anderson, attorney with Dickinson Wright PLLC, for this important program:
Mr. Anderson has experienced the push and pull of faculty start-ups from both sides of the table, and he’ll provide critical insight and guidance on the factors that trigger conflict, the contractual blunders that allow it, and the best practices that will prevent it. Here’s a brief look at the agenda:
- Heading off common areas of disagreement and laying the groundwork for smooth sailing:
- The timing and drafting of founder’s agreements
- How the university’s equity terms are drafted
- Valuation perception
- Risks to subsequent funding rounds
- Clearly defining milestones and due diligence in the contracts
- Addressing sublicensing parameters, royalty rates, and auditing rights
- How entrepreneurial programs and start-up initiatives impact the tech transfer function and the office’s relationships with inventors and business leaders
- Warning signs and corrective steps
- Knowing when it’s time to go back to the negotiating table and how to do it without alienating faculty
Meet Your Program Leader:
Lance Anderson is a Member in the Austin, Texas office of Dickinson Wright PLLC. He has extensive experience preparing and negotiating technology and intellectual property-focused transactions, as well as technology aspects of mergers and acquisitions, joint ventures, and other complex commercial transactions. A registered patent attorney, Mr. Anderson also handles patent prosecution, due diligence for licensing and acquisitions, technology agreements, strategic planning, trade secrets, and related operational legal issues.
Prior to private practice, Lance served for over ten years as in-house counsel and lead intellectual property attorney for both a large public research university system and an early stage venture capital company, overseeing all facets of intellectual property development, management, and transactions.
Lance represents clients within the innovation and research enterprise including R&D, clinical and regulatory matters, strategic collaborations, CRADAs, manufacturing, distribution, engineering services, institutional technology transfer, confidentiality and materials exchange, and related alliances. In addition to representing clients on intellectual property issues, he has been involved in many aspects of corporate law, operations, financing and litigation ranging from start-up and early stage companies to mature market leaders.
