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Drafting a Successful Collaboration Agreement
7:30 Pre-Conference
Tutorial Registration and Morning Coffee
8:00 How Can You
Maintain the Integrity of Your Company's Existing Intellectual Property While
Partnering?
• What should you
disclose about your company's patent rights and trade secrets during the
negotiation?…. during the collaboration?
• How can you prevent
existing intellectual property from becoming "joint inventions" of the
collaboration?
• How can you preserve
multiple business opportunities when partnering your intellectual property?
• How can you manage
multiple "fields of use" as they relate to your intellectual property
assets?
9:30 Networking
Coffee Break
10:00 How to
Facilitate the Protection of Intellectual Property and Optimize
Commercialization?"
• How should ownership of
collaboration intellectual property be divided? What consequence for
patents filed by either party after the end of the collaboration?
• Trade secret protection
-- which party should benefit and how?
• What can each party do
with collaboration intellectual property -- is its use limited to
collaboration products or may it be used in other ways? What is the scope
and nature of any exclusivity?
• Patent protection --
who controls and who pays for prosecution?
• Patent enforcement --
who controls and how are fields divided?
• Royalties and
collaboration intellectual property -- how do you allocate the spoils?
• Third party patents and
infringement -- stacking provisions, generic competition, off-label use
concerns, etc.
11:30 Close of
Tutorial
Facilitators:
Beth Arnold, J.D., Partner, Foley Hoag, LLP
Peter Rosenblum,
J.D., Managing Partner, Foley Hoag, LLP
Kingsley Taft,
J.D., Associate, Foley Hoag, LLP
About the Tutorial
Facilitators:
Foley Hoag's
multi-disciplinary life science practice serves technology start-ups to
Fortune 100 companies in all facets of the life science industry including
biotechnology, pharmaceutical, and medical device companies, and leading
research institutions and universities. Our experienced team of
professionals represent clients in a range of areas, from patent prosecution
and litigation, federal administrative and regulatory matters, strategic
alliances and collaborations to financing, securities and general corporate
affairs. The breadth and depth of our life sciences practice enables the
firm to meet our clients many legal and business needs.
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