It’s Not Just Boilerplate! - Best Practices for Drafting Collaboration Agreements to Protect Your IP

This program will highlight best practices for exchanging information during a collaboration, and will include a discussion of pitfalls to avoid in drafting collaboration agreements, in particular:

• Confidentiality / non-disclosure obligations and exceptions
• IP ownership, inventorship, and improvements clauses
• Scope of license and permitted uses of licensed technology

The program will draw lessons from the case of Tekmira Pharmaceuticals Corp., which learned the hard way about protecting its trade secrets in a collaboration with Alnylam Pharmaceuticals Inc.

The collaboration ended badly, with Tekmira suing Alnylam in 2011 for trade secret theft and breach of contract. Tekmira alleged that Alnylam applied for patents in its own name on Tekmira's delivery technology, passed off Tekmira's technology as Alnylam's own "next generation" competing technology, and sold Tekmira’s manufacturing secrets to a third party in Asia without Tekmira’s permission. Alnylam sought to defend itself by saying its conduct was authorized by the parties' collaboration agreements. The litigation settled in November 2012, two days before trial, with Alnylam agreeing to pay Tekmira $75 million in cash and near-term milestone payments and agreeing to transfer 150 patents and patent applications to Tekmira.

This program examines the Tekmira/Alnylam dispute as a case study on how best to protect trade secrets during a collaboration.

There are 2 sessions, 8:00 AM PST or 4:00 PM PST.

To ensure receiving MCLE credit, please download and complete the attendance form for the appropriate session below. All fields on the form must be filled out, including all sign-in and sign-out times and signatures, or else credit can not be issued. Please note that a code will be given during the webinar that must be entered onto the form, as well. An optional evaluation form is also available. Please return your signed and completed attendance form to the email address provided.

For those in the 8:00 AM session seeking MCLE credit, please use the following forms:

MCLE Attendance Form (8 AM only)

CA MCLE Evaluation Form (8 AM only - Optional)

NY MCLE Evaluation Form (8 AM only - Optional)

For those in the 4:00 PM session seeking MCLE credit, please use the following forms:

MCLE Attendance Form (4 PM only)

CA MCLE Evaluation Form (4 PM only - Optional)

NY MCLE Evaluation Form (4 PM only - Optional)

A copy of the presentation for MCLE purposes is available for download.

Orrick AIPLA Presentation - Best Practices for Protecting IP in a Collaboration