This is a webcast of the live San Francisco session.Why you should attend
In the current economy, the heat is on to monetize patent portfolios. Thus, understanding patent transactions has never been more important. Experts in patent licensing will tell you how to get the most money from patent licensing, how to negotiate patent license agreements, and discuss “The Good, The Bad and The Ugly” examples from actual patent license agreements. The program will emphasize practical tips for structuring, negotiating and drafting patent licenses, with strategies for the licensor and licensee.
What you will learn
- How do you monetize patents?
- Hear experts from Silicon Valley’s best companies /firms tell you what to watch out for
- How the courts have expanded the reach of patent infringement (thus increasing licensing opportunities)
- How the courts have expanded the scope of patent invalidity/indefiniteness challenges (thus discouraging licensing opportunities)
- How traditional patent licensing provisions need to be updated in light of recent case law
- Get what you want in licensing without giving away the store
- Controversial provisions and how to negotiate them
- Patent and/or license enforcement considerations
- U.S. v. foreign licensing considerations
Who should attend
This seminar is geared toward those who need to offer patents for licensing, draft and negotiate patent licenses, enforce patent license agreements, and develop portfolios for licensing. The course will benefit intellectual property lawyers, corporate counsel, and others involved in the utilization of patents as business assets.
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.
All times are P.D.T.
Morning Session: 9:00 a.m. - 12:30 p.m. (P.D.T.)
9:00 Program Overview
Mark S. Holmes, Joseph Yang
9:15 Patent Monetization Tactics
- Your client asks “I have this portfolio. How do I make money with it?” What do you do?
- How to you maximize license revenue
- Divide and conquer? Or clip coupons? Which should you do and why?
Mark S. Holmes
9:45 Structuring the License Grant and Royalty Provisions
- Licensed rights: list vs. capture period; patents vs. claims
- Setting the license term: life of patents vs. guillotine, etc.
- The license grant: broad vs. narrow
- Royalty structures and economic considerations
- Ecosystem licensing and exhaustion considerations
Matthew K. Miller
10:15 Recent Legal Developments Affecting Patent Licensing
- Pro-licensor developments vs. pro-license developments
- Expanded licensing opportunities: the expanding scope of indirect infringement
- Discouraging licensing by attacking patent validity (obviousness, DJ, reexam, etc.)
- Discouraging licensing by attacking claims as “indefinite”
- Changing litigation leverage: reasonable royalty, hypothetical negotiations, injunctions, etc.
- The ever-increasing scope of implied licenses, estoppel and other equitable rights
- Royalty structure considerations: royalty base, RAND, misuse, effect on DJ, etc.
Joseph Yang
11:15 Networking Break
11:30 Analysis of a Patent License Agreement
- Not all licenses are created equal: how to get the upper hand
- 50 page license agreement winds up in your email: where are the land mines?
- What are the hot legal buttons?
- Are patent owners becoming more willing to indemnify against patent infringement?
- Is it better to arbitrate?
- A bridge too far? How far can a licensor push before the potential licensee walks?
- Fields of use or Fields of Dreams: territorial and use restrictions can maximize revenues
- The fear of sublicensing it and how to protect yourself
- Why negotiating licenses are different from M&A and other transactions
- Learn from experienced licensing attorneys using clauses taken from actual agreements
Mark S. Holmes (Moderator); James F. Brelsford, Sara Duval Harrington, Winston E. Henderson, Meredith M. McKenzie, Duane R. Valz
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m. (P.D.T.)
1:45 Analysis of a Patent License Agreement (continued)
- You want to pay me in what currency? How to get royalties back to the States
- Chinese patents licensed under an agreement governed by California law?
- Let’s arbitrate in Hawaii!
- When licensees want to pay for prosecution of licensor’s patents
Mark S. Holmes (Moderator); James F. Brelsford, Sara Duval Harrington, Winston E. Henderson, Meredith M. McKenzie, Duane R. Valz
2:45 Networking Break
3:00 Mock Deal Negotiation of a Patent License - Learn the Key Issues from the Licensor and Licensee Points of View
- Scope of the license (current vs. future products)
- What happens when licensed products are made in one country and sold elsewhere (patent coverage, royalty base, tracking, etc.)?
- Royalty and other economic considerations
- The importance of reporting, auditing, etc.
- Dispute resolution issues (choice of law, arbitration, etc.)
- Reps and warranties
- Statutory restrictions (competition law, misuse, exclusivity, grantbacks)
- Other considerations
Joseph Yang (Moderator); Jake Handy, Nader A. Mousavi (via video conference)
4:00 Mock Deal Negotiation of a Patent License - Learn the Key Issues from the Licensor and Licensee Points of View (continued)
5:00 Adjourn
Co-Chair(s)
Speaker(s)
Program Attorney(s)
John M. Mola ~ Director of California Operations, Practising Law Institute
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unless otherwise noted in the product description) in the following states/territories: Alabama, Alaska, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana
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Arizona: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
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1Indiana: Considered a distance education course. There is a 6 credit limit per year.
2New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video 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.
3Ohio: To confirm that the live webcast 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 biennial 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.
4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.
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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.
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