Institutions involved in the exchange of unique materials – including federal laboratories, industrial research laboratories, and laboratories in universities, hospitals, or independent research institutes – often have specific expectations regarding compensation for the help they provide. It may range from acknowledgment in a publication to ownership of inventions made with the aid of the provided material.

Industry defends its commercial interests vigorously, and seeks to offset risk by acquiring and protecting exclusivity in the marketplace through patent law or by use of trade secrets. In contrast, the federal government and its academic grantees look to preserve the flow of ideas for public benefit, primarily through timely publication, and to serve as the public's steward of inventions by preserving the potential for new knowledge to generate a product from which the public may benefit. The exchange of materials between universities and industrial laboratories is often difficult, and unlikely to be standardized in the near future.

This audio conference presentation discusses how to deal with these competing priorities, and craft terms which avoid conflict and allow all parties to benefit.

This audio conference covers:

• How to carefully craft terms so that the rights of research sponsors are protected, the licensee will diligently develop the intellectual property for public use, and the academic research facility receives fair compensation
• How a material transfer agreement (MTA) may include a more subtle kind of capture of intellectual property rights
• Use of reach-through license agreements (RTLA), giving each upstream patent owner a continuing right to be present at the bargaining table as a research project moves downstream
• Why conflicting goals and ownership rights may not leave enough private value for downstream developers to bring products to the market
• Overcoming the "attribution bias” which can interfere with clear-headed bargaining, leading owners to overvalue their own patents, undervalue others' patents, and reject reasonable offers
• Why careless acceptance of terms that surrender intellectual property rights may shut down new avenues of research

About the speaker:

Kattina V. Barsik, Esq. is an intellectual property and registered patent attorney. Her practice includes advising clients on the scope and validity of patent, trademark, and copyright issues, as well as litigating on their behalf. Kattina grew up in the Lehigh Valley and received her Bachelor of Science in Genetic Engineering at Cedar Crest College in Allentown, PA. Upon graduation she accepted a research position at Wake Forest University Medical Hospital where she worked in their Comparative Medicine Department, before attending law school. She graduated from The John Marshall Law School in Chicago, IL where she received her J.D and L.L.M in Intellectual Property Law. Ms. Barsik is a licensed attorney in New Jersey and before the United States Patent and Trademark Office. She is a member of the New Jersey Volunteer Lawyers for the Arts, American Bar Association, New Jersey State Bar Association, Hispanic Bar Association of New Jersey and a Board member of The Arts Guild of New Jersey in Rahway, NJ and on the Board of the Seventh Street Development Committee in Allentown, PA.

Who should attend?

• Global Pipeline Planning Managers
• Directors of Pre-clinical Sciences
• Heads or Directors of External Discovery
• Scientists
• Directors of Global Regulatory Affairs
• Directors of Clinical Development
• Corporate Brand Managers
• Directors or Managers of Licensing and Knowledge
• Sales & Marketing Directors
• Managers for New Product Licensing
• Legal Counsel
• Academic or Institutional Researchers
• Academic or Institutional Directors