Key Considerations in Joint Technology Development Agreements: Crucial clauses, common issues, and avoidable risks in life sciences

Mat Trachok | WilmerHale

[email protected] | (628) 235-1000

Mat Trachok’s practice focuses on advising clients on technology-centered transactions. Mr. Trachok’s clients are primarily in the biotechnology, pharmaceutical and medical device industries, and span the range from established to emerging companies. Mr. Trachok advises clients on developing term sheets and negotiating and drafting complex commercial and intellectual property transactions, including licensing, research collaboration, co-development and co-commercialization agreements.

From 2012 to 2015, Mr. Trachok litigated intellectual property and breach of contract disputes, at the state and federal trial and appellate levels, involving a broad range of technologies, including pharmaceuticals, medical devices, optical networks, near field communication, network interfaces and crop planters. Mr. Trachok’s litigation practice encompassed all stages of litigation—from pre- suit investigations through discovery, summary judgment, trial, settlement, alternative dispute resolution and appeal. His appellate experience included the United States Court of Appeals for the Federal Circuit, the Massachusetts Supreme Judicial Court and the Supreme Court of the State of Vermont

Judith A. Hasko| WilmerHale

[email protected] | (650) 600-5138

Judith Hasko serves as co-chair of WilmerHale’s Life Sciences Practice. She provides counsel to life sciences companies and their investors on strategic, intellectual property and technology-based commercial transactions. Companies in the biotechnology, pharmaceutical, medical device and diagnostic product sectors, along with their investors, depend on Ms. Hasko for guidance and execution of licensing, corporate partnerships, joint ventures, co- promotion arrangements, manufacturing and distribution agreements, asset purchases and royalty stream transactions.

Widely recognized for her market-leading transactional work, Ms. Hasko brings complementary business and scientific perspectives to her legal representations. Her work in the life sciences industry is consistently recognized by Chambers USA, The Legal 500 United States, IAM Patent and LMG Life Sciences. Ms. Hasko is a Certified Licensing Professional (CLP), and a member of the Patent Bar. Prior to attending law school, she was part of Genentech’s cardiovascular research department.

Prior to joining the firm, Ms. Hasko was a partner in the Silicon Valley office of another major international law firm, where served as vice chair of their Healthcare & Life Sciences Practice.

I. Structuring the agreement to meet business objectives | 11:00am – 11:30am

II. Intellectual property: Licenses, ownership of new technology and inventions, allocation of prosecution and enforcement rights | 11:30am – 12:00pm

Break | 12:00pm – 12:10pm

III. Governance mechanisms | 12:10pm – 12:40pm

IV. Termination rights and effects of termination | 12:40pm – 1:10pm