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Building a Law Department IP Licensing Program 2013: Driving Shareholder Value

Released on: Oct. 4, 2013

Running Time: 06:36:05

Segments
Overview
Faculty
CLE Credit

Running Time	Segment Title	Faculty
[01:40:56]	Building a Patent Licensing Program	Gail Shulman ~ Former General Counsel of MIPS Technologies, Inc., James F. Brelsford ~ Skadden, Arps, Slate, Meagher & Flom LLP Bernard J. Cassidy ~ CEO, Bernard J. Cassidy, A Professional Corporation
[01:00:05]	Indirect Licensing Models and Issues	John C. Lindgren ~ President and Chief Executive Officer, MOSAID Technologies Incorporated Deirdre Leane ~ President, IP Navigation Group, LLC Jonathan Taub ~ Executive Vice President, Acacia Research Group LLC
[00:32:30]	Unique Deal Issues in Patent Licensing	James F. Brelsford ~ Skadden, Arps, Slate, Meagher & Flom LLP Jennifer B. Wuamett ~ Vice President and Chief Intellectual Property Counsel, Freescale Semiconductor, Inc.
[00:47:35]	Accounting and Tax Issues in Patent Licensing	Karl Kieslich ~ Partner, Financial Accounting Advisory Services - Americas, EY Stephen R.A. Bates ~ Principal - National Tax, International Tax Services, EY
[00:44:35]	Judicial and Regulatory Rulings Affecting Value	Bernard C. Shek ~ Senior Director, Litigation, SanDisk Corporation Andrew N. Thomases ~ Skadden, Arps, Slate, Meagher & Flom LLP
[00:48:00]	Antitrust Considerations	Richard S. Taffet ~ Bingham McCutchen LLP
[01:00:00]	Ethics: How the Business Role Impacts the Attorney-Client Privilege, and Waiver Risks	Tharan Gregory Lanier ~ Jones Day

The role of the law department in managing the IP assets of a company is expanding in new and challenging ways. Whether driven by shareholder activism or Board of Director or C-suite pressure, companies are increasingly looking for new methods to extract value from their intellectual property portfolio. Innovative law departments have a rare opportunity to provide corporate leadership by developing revenue-generating patent licensing programs to increase shareholder value. Due to the legal complexities inherent in an IP-revenue program, the law department is best suited for building and maintaining a licensing business. Adding a profit center component to the law department can transform how the C-suite and Board view the legal function.

In this program, leading players from companies and outside service providers will provide comprehensive guidance on the tools and skills necessary to implement a licensing program, manage a P/L, build internal support through effective communication with the C-suite and Board about the value of such a program, and sustain and grow an IP licensing line of business.

Lecture Topics [Total time 06:36:05]

Segments with an asterisk (*) are available only with the purchase of the entire program.

Program Overview* [00:02:24]
James F. Brelsford
Building a Patent Licensing Program [01:40:56]
Bernard J. Cassidy, Gail Shulman, James F. Brelsford
Indirect Licensing Models and Issues [01:00:05]
Deirdre Leane, John C. Lindgren, Jonathan Taub
Unique Deal Issues in Patent Licensing [00:32:30]
James F. Brelsford, Jennifer B. Wuamett
Accounting and Tax Issues in Patent Licensing [00:47:35]
Karl Kieslich, Stephen R.A. Bates
Judicial and Regulatory Rulings Affecting Value [00:44:35]
Bernard C. Shek, Andrew N. Thomases
Antitrust Considerations [00:48:00]
Richard S. Taffet
Ethics: How the Business Role Impacts the Attorney-Client Privilege, and Waiver Risks [01:00:00]
Tharan Gregory Lanier

Presentation Material

Introductory Comments (PowerPoint Slides)
James F. Brelsford
Program Overview
James F. Brelsford
Building a Law Department IP Licensing Program: Driving Shareholder Value (PowerPoint Slides)
James F. Brelsford
Operating a Patent Licensing Program (PowerPoint Slides)
Bernard J. Cassidy
Indirect Licensing (PowerPoint Slides)
Deirdre Leane
IP Marketing Landscape, Trends
Jonathan Taub
Unique Deal Issues in Patent Licensing (PowerPoint Slides)
James F. Brelsford, Jennifer B. Wuamett
Intellectual Property Licensing (PowerPoint Slides)
Karl Kieslich, Stephen R.A. Bates
Judicial and Regulatory Rulings Affecting Value (PowerPoint Slides)
Bernard C. Shek, Andrew N. Thomases
Antitrust Developments in Connection with the Acquisition, Enforcement and Licensing of Patents (PowerPoint Slides)
Richard S. Taffet
Antitrust Considerations
Richard S. Taffet
Wearing Two Hats – Privilege and the In-House Counsel Handling IP Licensing/Enforcement (PowerPoint Slides)
Tharan Gregory Lainer

Chairperson(s)

James F. Brelsford ~ Skadden, Arps, Slate, Meagher & Flom LLP

Speaker(s)

Stephen R.A. Bates ~ Principal - National Tax, International Tax Services, EY

Bernard J. Cassidy ~ CEO, Bernard J. Cassidy, A Professional Corporation

Karl Kieslich ~ Partner, Financial Accounting Advisory Services - Americas, EY

Tharan Gregory Lanier ~ Jones Day

Deirdre Leane ~ President, IP Navigation Group, LLC

John C. Lindgren ~ President and Chief Executive Officer, MOSAID Technologies Incorporated

Bernard C. Shek ~ Senior Director, Litigation, SanDisk Corporation

Gail Shulman ~ Former General Counsel of MIPS Technologies, Inc.,

Richard S. Taffet ~ Bingham McCutchen LLP

Jonathan Taub ~ Executive Vice President, Acacia Research Group LLC

Andrew N. Thomases ~ Skadden, Arps, Slate, Meagher & Flom LLP

Jennifer B. Wuamett ~ Vice President and Chief Intellectual Property Counsel, Freescale Semiconductor, Inc.

PLI makes every effort to accredit its On-Demand Web Programs and Segments. Please check the CLE Calculator above for CLE information specific to your state.

On-Demand Web Programs and Segments are approved in:

Alabama¹, Alaska, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois , Iowa²*, Kansas, Kentucky*, Louisiana, Maine*, Mississippi, Missouri³, Montana, Nebraska, Nevada, New Hampshire⁴, New Jersey, New Mexico⁵, New York⁶, North Carolina⁷, North Dakota, Ohio⁸, Oklahoma⁹, Oregon*, Pennsylvania¹⁰, Rhode Island¹¹, South Carolina, Tennessee¹², Texas, Utah, Vermont, Virginia¹³, Washington, West Virginia, Wisconsin¹⁴ and Wyoming*.

Iowa, Mississippi, Oklahoma, and Wisconsin DO NOT approve Audio Only On-Demand Web Programs.

Minnesota approves live webcasts ONLY

Please Note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement. PLI programs may qualify for credit based on the requirements outlined in the MCLE Regulations and Ariz. R. Sup. Ct. Rule 45.

*PLI will apply for credit upon request. Louisiana and New Hampshire: PLI will apply for credit upon request for audio-only on-demand web programs.

¹Alabama: Approval of all web based programs is limited to a maximum of 6.0 credits.

²Iowa: The approval is for one year from recorded date. Does not approve of Audio-only On-Demand Webcasts.

³Missouri: On-demand web programs are restricted to six hours of self-study credit per year. Self-study may not be used to satisfy the ethics requirements. Self-study can not be used for carryover credit.

⁴New Hamphsire: The approval is for three years from recorded date.

⁵New Mexico: On-Demand web programs are restricted to 4.0 self-study credits per year.

⁶New York: Newly admitted attorneys may not take non-traditional course formats such as on-demand Web Programs or live Webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.

⁷North Carolina: A maximum of 4 credits per reporting period may be earned by participating in on-demand web programs.

⁸Ohio: To confirm that the web program has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.

⁹Oklahoma: Up to 6 credits may be earned each year through computer-based or technology-based legal education programs.

¹⁰Pennsylvania: PA attorneys may only receive a maximum of four (4) hours of distance learning credit per compliance period. All distance learning programs must be a minimum of 1 full hour.

¹¹Rhode Island: Audio Only On-Demand Web Programs are not approved for credit. On-Demand Web Programs must have an audio and video component.

¹²Tennessee: The approval is for the calendar year in which the live program was presented.

¹³Virginia: All distance learning courses are to be done in an educational setting, free from distractions.

¹⁴Wisconsin: Ethics credit is not allowed. The ethics portion of the program will be approved for general credit. There is a 10 credit limit for on-demand web programs during every 2-year reporting period. Does not approve of Audio-only On-Demand Webcasts.

Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon and keynote speakers.

If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.

Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, call Customer Service (800) 260-4PLI (4754) or e-mail info@pli.edu.

Related Treatises

Patent Licensing: Strategy, Negotiation, and Forms

Electronic Discovery Deskbook

Kane on Trademark Law: A Practitioner's Guide

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	On-Demand Segment Description Faculty CLE Credit PLI makes every effort to accredit its recorded programs. PLI MP3s are approved in the following states/territories: AK, CA¹, CO, FL, GA, ID, IL, KS², ME, MO, MT, NC, ND, NH, NJ, NM, NV, NY, OR, PA, TX³, UT, VI, VT, WA, WV, WY. Some exceptions apply. For more information contact PLI. ¹California: This activity qualifies for participatory credit. ²Kansas: There is a 5.0 credit limit per year for this type of viewing. ³Texas: Considered self-study credit. There is a 5 credit limit, including specialty credit. Please note:* The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement. *PLI will apply for credit upon request. Running time and CLE credit hours earned are not necessarily the same. Please be aware that many states do not permit credit for luncheon speakers. Special Note: In New York, non-traditional course formats including audio and video cassettes are NOT acceptable for transitional CLE credit for the newly admitted attorney within the first two years after their admission to the Bar. Attorneys other than newly admitted may use non-traditional course format, including audio and video cassettes to fulfill their CLE requirements. IMPORTANT INFORMATION FOR ATTORNEYS SEEKING CLE CREDIT While listening to the program, be alert to listen for the AUTHORIZATION CODE which has been placed somewhere within the program. Write the code down; you will be asked for this information when you request CLE credit. Once you’ve completed the program, please go to www.pli.edu and log in. Once you are logged in, your account will be displayed and the available programs will be listed on the left side under the heading "My Online Library". If you are already logged in, click the link for My Account on the home page to access your Online Library. Return to the program and click the MCLE Registration button in the top right region of the program window. A new window will open with a CLE Request form, you will be asked to complete a short evaluation, and fill in the AUTHORIZATION CODE, please complete and submit the form. Once you click the Submit button, your request for CLE credit will be sent to the CLE department. PLI will email you a CLE certificate within 48 hours. If you are unable to successfully log in, please contact our customer service department at 800-260-4754 for assistance. GENERAL INFORMATION This product is designed to provide practical and useful information on the subject matter covered. However, it is sold with the understanding that the publisher is not engaged in rendering legal, accounting or other professional services. If legal advice or other expert assistance is required, the services of a competent professional should be sought. If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued. PLI makes every effort to accredit its On-Demand Web Programs and Segments. Please check the CLE Calculator above for CLE information specific to your state. On-Demand Web Programs and Segments are approved in: Alabama¹, Alaska, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho, Illinois , Iowa², Kansas, Kentucky, Louisiana, Maine, Mississippi, Missouri³, Montana, Nebraska, Nevada, New Hampshire⁴, New Jersey, New Mexico⁵, New York⁶, North Carolina⁷, North Dakota, Ohio⁸, Oklahoma⁹, Oregon, Pennsylvania¹⁰, Rhode Island¹¹, South Carolina, Tennessee¹², Texas, Utah, Vermont, Virginia¹³, Washington, West Virginia, Wisconsin¹⁴ and Wyoming. Iowa, Mississippi, Oklahoma, and Wisconsin DO NOT approve Audio Only On-Demand Web Programs. Minnesota approves live webcasts ONLY Please Note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement. PLI programs may qualify for credit based on the requirements outlined in the MCLE Regulations and Ariz. R. Sup. Ct. Rule 45. *PLI will apply for credit upon request. Louisiana and New Hampshire: PLI will apply for credit upon request for audio-only on-demand web programs. ¹Alabama: Approval of all web based programs is limited to a maximum of 6.0 credits. ²Iowa: The approval is for one year from recorded date. Does not approve of Audio-only On-Demand Webcasts. ³Missouri: On-demand web programs are restricted to six hours of self-study credit per year. Self-study may not be used to satisfy the ethics requirements. Self-study can not be used for carryover credit. ⁴New Hamphsire: The approval is for three years from recorded date. ⁵New Mexico: On-Demand web programs are restricted to 4.0 self-study credits per year. ⁶New York: Newly admitted attorneys may not take non-traditional course formats such as on-demand Web Programs or live Webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats. ⁷North Carolina: A maximum of 4 credits per reporting period may be earned by participating in on-demand web programs. ⁸Ohio: To confirm that the web program has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program. ⁹Oklahoma: Up to 6 credits may be earned each year through computer-based or technology-based legal education programs. ¹⁰Pennsylvania: PA attorneys may only receive a maximum of four (4) hours of distance learning credit per compliance period. All distance learning programs must be a minimum of 1 full hour. ¹¹Rhode Island: Audio Only On-Demand Web Programs are not approved for credit. On-Demand Web Programs must have an audio and video component. ¹²Tennessee: The approval is for the calendar year in which the live program was presented. ¹³Virginia: All distance learning courses are to be done in an educational setting, free from distractions. ¹⁴Wisconsin: Ethics credit is not allowed. The ethics portion of the program will be approved for general credit. There is a 10 credit limit for on-demand web programs during every 2-year reporting period. Does not approve of Audio-only On-Demand Webcasts. Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon and keynote speakers. If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued. Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, call Customer Service (800) 260-4PLI (4754) or e-mail info@pli.edu. Add to Cart Membership Suite Options: Add to My List Register From Roster Request Groupcast Receive all of the items below at the reduced price of $0.00 A combined savings of $0.00 Buy Combo CREDIT INFORMATION Credits for: