Information Technology Law

Technology Licensing and Development Agreements

By Cynthia Cannady
LexisNexis Matthew Bender March 2013

Specifications

ISBN-13
9780769868585
Publisher
LexisNexis Matthew Bender
Publication
March 2013
Format
Paperback + CD-ROM
Jurisdiction
U.S. ? Countri(es) for reference only

Details

Technology Licensing and Development Agreements authored by Cynthia Cannady: Technology licensing and development agreements are increasingly important to businesses in both the United States and abroad, in industries including computer hardware and software, nanotech, biotech, medical devices, pharmaceuticals, bioinformatics, energy, and environmental technology.

Technology Licensing and Development Agreements is an indispensable guide for business people, technologists, and lawyers who deal with intellectual property and contracts. The book provides practical advice on how to conduct negotiations, how to draft agreements, and how to monitor compliance. The author discusses technology contracts in the context of intellectual property strategy, and provides a framework for selecting and adjusting IP strategies. Chapters on material terms define, analyze, and discuss best practices, and offer sample clauses for more than 40 material terms. Additional chapters address special contexts for technology agreements, including antitrust and university contracts. The book includes specific chapters devoted to IP valuation, with clear explanations of methodology, and ethics in technology contracting, providing practical examples and a checklist.

An accompanying convenient CD includes more than 20 helpful form contracts and templates.

Features

•   Includes chapters on antitrust and standards licensing and on agreements with universities and national laboratories 
•   Addresses ethics in technology contracts, a subject not often treated in other works 
•   Step-by-step guide to negotiating and drafting technology contracts 
•   Provides a term-by-term analysis of material terms in licensing and development agreements, with definitions, best practices, and sample clauses 
•   Contains a convenient CD with helpful sample form contracts and templates 
•   Offers a framework that identifies 15 IP strategies and shows how technology licensing and development agreements relate to each of them with specific examples of each strategy

Table of Contents

Chapter 1 TECHNOLOGY LICENSING AND DEVELOPMENT AGREEMENTS DEFINED 
Chapter 2 INTELLECTUAL PROPERTY STRATEGY 
Chapter 3 HOW TO PREPARE FOR NEGOTIATIONS 
Chapter 4 THE MATERIAL TERMS OF LICENSE AGREEMENTS 
Chapter 5 THE MATERIAL TERMS OF DEVELOPMENT AGREEMENTS 
Chapter 6 VALUATION OF INTELLECTUAL PROPERTY 
Chapter 7 TECHNOLOGY AGREEMENTS WITH UNIVERSITIES AND NATIONAL LABORATORIES 
Chapter 8 STANDARDS LICENSING AND ANTITRUST 
Chapter 9 ETHICS IN TECHNOLOGY AGREEMENTS 
Chapter 10 NEGOTIATING TECHNOLOGY LICENSING AND DEVELOPMENT AGREEMENTS 
Chapter 11 DRAFTING AND MONITORING TECHNOLOGY AGREEMENTS 
Chapter 12 THE CHALLENGES AHEAD FOR TECHNOLOGY CONTRACT 
APPENDIX I Reserved 
APPENDIX II Reserved 
APPENDIX III Resources 
APPENDIX IV Intellectual Property Basics

About the Author

Cynthia Cannady, J.D. is a founder and principal in IP*SEVA, an international network of professionals providing intellectual property services to sustainable energy technology ventures. A graduate of Harvard Law School and Stanford University, and a member of the California and District of Columbia Bars, she has been a director at the World Intellectual Property Organization, Vice President of Law for Research, Development and Manufacturing at Apple, and a partner in the Silicon Valley law firm of Fenwick & West. She is a member of the Licensing Executives Society and the Association of University Technology Managers.

Reviews

"Cynthia Cannady has written a much-needed guide for lawyers, technology-transfer professionals, and business managers to understand not only why intellectual property is important, but also to understand how the entities they serve-including universities, federal labs, and private companies-can maximize its value." 
--John Fraser, CLP, RTTP 
Past-President, AUTM 
Assistant Vice President for Research & Economic Development, 
Office of Research, Florida State University, Tallahassee, Florida 


"Technology Licensing and Development Agreements is a book that's grounded in practice and thus highly relevant to practitioners. It also addresses strategic issues in intellectual property, which are fast growing in importance for law firms and their clients. Lastly, Cynthia Cannady writes in a systematic way, without any jargon. A refreshing and highly valuable book!" 
--Dr. Georges Haour, Professor at IMD, (International Institute for Management Development), Lausanne, Switzerland 

"Anyone working with IP-related transactions will benefit from Technology Licensing and Development Agreements. Cynthia Cannady has distilled her extensive experience into an extremely useful reference that explains and provides samples of all significant provisions of license, development and university agreements. The excellent chapters addressing negotiations and ethics are also invaluable. Her easy prose and valuable insights make this book a worthy contribution to the profession." 
--D. Patrick O'Reilley, Partner, Finnegan 
Past-President, Licensing Executives Society International

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