Why you should attend
Licensing transactions are more complex and more important than ever. The constantly evolving legal, regulatory and technical landscape drives the need to stay current in a wide variety of key areas. Whether utilized to develop technology, expand or create market opportunities, or generate returns from existing assets, managing complex licensing transactions requires a broad and varied toolkit. Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction. This program is designed to address some of the more complex and practical issues that arise in drafting and negotiating IP licenses, as well as tips for specific industries. This program will feature updates on current legal developments, present case studies highlighting best practices, provide tactical guidance for negotiating frequently contested issues, and provide a framework for identifying and avoiding common pitfalls, keeping the relationship on track, litigation planning and avoidance, and addressing ethics concerns. The speakers will illustrate both outside counsel and in-house perspectives.
What you will learn
- Pointers for strategic alliances and other joint development agreements
- Best practices for patent and technology licensing
- Guidance on copyright, content, and trademark licensing
- Software licensing and open source issues
- Guidelines for trade secret licensing
- Navigating issues in life sciences licensing
- Mastering effective negotiation strategies
- Addressing international licensing issues
- Practice tips for rights of publicity licensing
- Accounting for litigation risks
- Managing indemnification issues
- Case law update
- Special considerations raised by cloud computing
Special Features
- New: industry standards and FRAND licensing
- In-depth panel discussion of a complex technology license
- In-depth mock negotiation of a complex content license
- Breakouts to meet your practice needs
- Earn one hour of Ethics credit
Who should attend
This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.
PLI Group Discounts
Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.
PLI Can Arrange Group Viewing to Your Firm
Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.
Cancellations
All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.
Day One: 9:00 a.m. - 5:15 p.m.
Morning Session: 9:00 a.m. - 12:45 p.m.
9:00 Introduction
Ira Jay Levy, Joseph Yang
9:15 Patent and Technology Licensing
- Avoiding the most frequently made mistakes
- Technology vs. IP vs. blended licenses
- Why patent licensing is different
- Understanding grant types and degrees of exclusivity
- Indemnification and change of control issues
- Negotiation strategies
- Comparing licensee and licensor perspectives
Joseph Yang
10:15 Copyright, Content and Trademark Licensing
- Impact of digital distribution and media on licensing issues
- Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
- The latest developments involving copyright termination of transfers and licenses
- Licensing rights in preexisting content vs. newly created content
- Licensing for social media and user-generated content
- Key contract issues and negotiating points in content licenses
- The latest on quality control considerations
- Advanced considerations in trademark and brand licensing
- Sample licensing provisions
- Case law update and licensing implications
- Implementing a brand licensing program
Joseph J. Conklin, Kenneth M. Kaufman
11:30 Networking Break
11:45 BREAKOUTS
I. Analysis of a Content License Agreement
- Walkthrough and mock negotiation of a complex content license agreement
- Structuring IP rights allocation
- Negotiating new media rights
- Allocating merchandising rights
- Negotiating creative, business and technology control issues
- Funding and royalty-sharing considerations
- Interplay of technology and content issues for digital content
Karen E. Baruh, Alexandra N. DeNeve, Kenneth M. Kaufman, Jonathan Sirota
II. Analysis of a Technology License Agreement
- Walkthrough of key technology license provisions
- Common pitfalls
- Confidentiality and trade secret issues
- Exclusivity
- Restricted fields of use
- Specifications
- Warranties and indemnification
Melvin C. Garner, Mark S. Holmes, Gail H. Zarrick
12:45 Lunch
Afternoon Session: 1:45 p.m. - 5:15 p.m.
1:45 Software Licensing, Open Source Issues and Cloud Computing
Software Licensing
- Source code issues
- Representations, warranties and indemnification
- Revenue sharing and auditing
- Training and support
- Keeping the relationship on track
Mark S. Holmes
Open Source Issues
- Recent developments in legal enforceability of open source licenses
- Comparing popular open source licenses
- Patent issues in open source licenses
Paul H. Arne
Cloud Computing
- What is cloud computing?
- Differences between SaaS, PaaS, and IaaS
- Overview of cloud computing legal issues
- Special contract issues raised by cloud computing arrangements
Peter J. Kinsella
3:45 Networking Break
4:00 Licensing and FRAND Issues For Standards Essential Patents; Indemnification
Licensing and FRAND Issues For Standards Essential Patents
- Core features of standards body patent licensing provisions
- Important variants of the foregoing
- Enforceability: Is it an actual grant? Or just a promise to grant
- What does RAND mean? Is FRAND different?
- What happens upon sale of the patents? Sale of the promisor?
- Recent legal developments in the U.S. and EU
Indemnification
Topics will vary by city, and may include:
- Overlaps/differences between R&W and indemnification
- Is “hold harmless” broader than “indemnify”?
- How patent guarantees are riskier than non-patent guarantees
- Carve outs (e.g., modifications, combinations or decisions by the licensee)
- What if the deliverable is intended for incorporation into a larger system?
- What if the deliverable is intended to be further modified?
- What if the deliverable is a design but the licensee makes the implementation choices?
- Tradeoffs vs. liability caps
- Litigation handoff when liability cap is exceeded
J. Ray Wood, Eleanor M. Yost
5:15 Adjourn
Day Two: 9:00 a.m. - 4:30 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 Litigation and Case Law Issues for Licensing Lawyers
- Strategic drafting considerations to account for litigation risks
- Pitfalls, and examples, of sloppy wording
- Impact of recent cases on drafting and negotiating
- Arbitration and other dispute resolution considerations
- Case law update
Ira Jay Levy
10:00 Strategic Alliances and Other Joint Development Agreements
- IP creation conflicts: Default laws vs. parties’ intentions
- IP allocation: Joint ownership vs. field-based ownership vs. separate entity
- IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
- IP de-allocation: Facilitating or inhibiting separation; bankruptcy
- Interplay with IP asset management
- Corporate vs. university partners
- "War stories" from real-life deals
Joseph Yang
11:00 Networking Break
11:15 BREAKOUTS
I. International Licensing – Asia
- Similarities and differences between domestic and Asian licensing
- Common pitfalls for U.S. lawyers doing Asian deals
- Local law issues to be aware of
- Cultural issues in Asian transactions
Grace L. Pan
II. International Licensing – Europe
- Similarities and differences between domestic and European licensing
- Common pitfalls for U.S. lawyers doing European deals
- Local law issues to be aware of
- Cultural issues in European transactions
Jeremy Schrire
12:15 Lunch
Afternoon Session: 1:15 p.m. - 4:30 p.m.
1:15 Ethical Considerations in Licensing
- Drafting in anticipation/avoidance of litigation
- What happens when a friendly deal turns litigious
- Deceit and candor
- Cross-border transactions
- Communications with adverse parties
David Rabinowitz
2:15 Networking Break
2:30 BREAKOUTS
I. Licensing Issues in the Life Sciences Industry
Topics will vary by city, and may include:
- Research plan
- Due diligence
- Transitioning pharmaceutical products/programs
- Monetary considerations (e.g., royalties, product returns, etc.)
- IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
- Clinical stage vs. commercialized products
- Government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
- Deal structures and governance
Natalie Bogdanos, Lauren Rabinovic
II. Rights of Publicity Licensing
- “Natural” v. statutory rights
- Lifetime v. postmortem rights
- Rights of publicity in “identifiable objects” symbolizing a persona
- Rights of publicity releases
- Liability for violating a right of publicity
- Differences compared to copyrights and rights of privacy
Mark G. Tratos
3:30 Negotiation Skills and Tactics
- How to prepare for license negotiations
- How to use psychological tools as part of your negotiation strategy
- Consensus and bridge building
- Differences between integrative ("win-win") and positional bargaining, and when to use each
Marcelo Halpern
4:30 Adjourn
Co-Chair(s)
Speaker(s)
Karen E. Baruh ~ VP Business & Legal Affairs, Content Distribution & Marketing, Viacom Media Networks
Natalie Bogdanos ~ Associate General Counsel and Senior Manager, Contracts, Memorial Sloan-Kettering Cancer Center
Joseph J. Conklin ~ Vice President, Associate General Counsel, Chief Intellectual Property Counsel, Coty Inc.
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law; Greenberg Traurig, LLP
Program Attorney(s)
New York City Seminar Location
PLI New York Center, 1177 Avenue of the Americas, (2nd floor), entrance on 45th Street, New York, New York 10036. Message Center, program days only: (212) 824-5733.
New York City Hotel Accommodations
Crowne Plaza Times Square Manhattan, 1605 Broadway (at 48th Street), New York, NY 10019 (212) 977-4000. When calling, mention Practising Law Institute. You can also make reservations online to access PLI's rates.
The Muse, 130 West 46th Street, New York, NY 10036. Please call reservations at 1-800-546-7866. When calling, please mention Practising Law Institute. You can also book online at https://gc.synxis.com/rez.aspx?Hotel=26750&Chain=10179&promo=PRLW.
Millennium Broadway Hotel, 145 West 44th Street, New York, NY 10036. Please call reservations at 1-800-622-5569. When calling, please mention Practising Law Institute. You can also book online at https://gc.synxis.com/rez.aspx?Hotel=11533&Chain=5303&promo=PLAW.