International Licensing of University Technologies: Opportunities and Pitfalls
Originally presented June, 2009

For tech transfer professionals, the world is shrinking. Globalization has made borders increasingly meaningless when it comes to licensing your innovations, and the opportunities for generating revenues in Europe, Asia, and elsewhere internationally have never been greater. But along with that opportunity comes tremendous challenge and complexity — and deals as well as IP protection must be carefully executed to avoid the many pitfalls that await even the most seasoned licensing professional.

Technology Transfer Tactics’ Distance Learning Division has teamed up with an international licensing expert — attorney Maggy Bailly of Seattle-based Bailly Law Firm — on a practical 90-minute audioconference will address the legal — as well as cultural — issues that arise in the international licensing of patents, copyrights, trademarks, and trade secrets. If your TTO is involved or plans to get involved in international tech transfer, you can’t afford to miss this session filled with critical advice and guidance.

Ms. Bailly will give you insight into the latest changes in licensing laws and reveal the opportunities and risks facing international licensing of university IP. She’ll cover:

• The impact and navigation of treaties that effect IP protection, including:
  o Paris convention
  o Patent Cooperation Treaty (PCT)
  o European Patent Convention (EPC)
  o Madrid Protocol
  o Community Trademark (CTM)
  o Berne Convention
  o NAFTA, TRIPS and more…
• Knowing where U.S. border protection of IP begins…and ends
• Understanding co-ownership rules in UK, Canada, Germany and France
• Parallel importing regulations in different jurisdictions
• Examples of “conflicts of laws” and “choice of laws” in various countries
• Insight into new trade secret laws in Asia
• How to prepare for cultural, commercial and technical issues when dealing with foreign licensees
• How to protect yourself — and your IP — when sub-licensing internationally
• And much, much more…

Your Expert Presenter
Before starting her own firm, Ms. Bailly was a partner in the Seattle law firm of Black Lowe & Graham. Prior to that, she managed international contracts and intellectual property licensing for Boeing Company, where she frequently facilitated negotiations with foreign governments and international companies.

Ms. Bailly is an adjunct professor at the University Of Washington School Of Law, where she teaches “Strategic Technology Transfers.” She held the position of Assistant Professor in Conflicts of Laws and Comparative Law at Liege University School of Law in Belgium. She is fluent in English and French and was Washington State Honorary Consul of France for 7 years.

Ms. Bailly is a frequent speaker at corporate seminars and conferences exploring intellectual property and international business issues. She was served as Chair of the International Section of the Washington State Bar Association for 2005-2006. She has also serverd as chair of the Seattle chapter of LESI (Licensing Executive Society International). In its June 2008 issue, Washington CEO magazine ranked Ms. Bailly as the number one Contracts/Agreements lawyer in Washington State and number three for Intellectual Property.

Who Should Listen
Technology transfer managers and professionals, university counsel, IP attorneys, administrators and deans, research commercialization directors, licensing specialists, corporate IP managers, technology investors, start-up managers, researchers and entrepreneurs, university research VPs, IP consultants, and others with an interest in successful international licensing of university IP.