This is a webcast of the live San Francisco session.Why you should attend
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.
What you will learn
- How to build a patent licensing program with meaningful return on investment
- What other companies are doing
- Insights and practical tips on getting board of director and executive alignment
- Explore legal issues that arise in the course of operating a licensing program
- Financial tools and concepts needed to operate an IP business cross-functionally
- Accounting and tax considerations
- Recent case law and regulatory changes that can affect value/pricing in patent licensing
- Implementing a direct licensing program versus an indirect licensing program -- what are the differences and why they matter
- How to handle deal issues unique to license fee or royalty bearing agreements
- How antitrust actions by regulators and private parties affect return on investment
Who should attend
General counsels, chief intellectual property officers/counsels, and other company stakeholders in developing a patent licensing program.
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
James F. Brelsford
9:15 Building a Patent Licensing Program
- Defining strategy and objectives
- Determining value
- Getting executive and board alignment
- Corporate governance: role of shareholder activism on IP-adjusted enterprise value
- Direct versus indirect licensing
- Sustaining product (patent) development
- Managing cultural differences between traditional legal function and an IP P/L
Bernard "Barney" J. Cassidy, Gail Shulman, Hironori Seki
10:45 Networking Break
11:00 Indirect Licensing Models and Issues
- Trends, models and pricing
- Determining value
- Standing issues
- Setting targets
- Patent clawbacks
- Impact of defensive aggregators on ROI
Deirdre Leane, John C. Lindgren, Erich Spangenberg, Jonathan Taub
12:00 Unique Deal Issues in Patent Licensing
- Pricing and geographic scope
- Field of use limitations
- Change in control
- Patent laundering/exhaustion
- Cross-license considerations
- Renewals
James F. Brelsford, Jennifer B. Wuamett
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:15 p.m. (P.D.T.)
1:45 Accounting and Tax Issues in Patent Licensing
- Revenue recognition
- Tax considerations
- Offshoring IP and other structural issues
- Forecasting and Modeling
Stephen R.A. Bates, Karl Kieslich
2:30 Judicial and Regulatory Rulings Affecting Value
- Developments in patent damages law
- Ability to obtain injunctive relief
- Changes in law regarding direct/indirect infringement
- FRAND
Bernard C. Shek, Andrew N. Thomases
3:15 Networking Break
3:30 Antitrust Considerations
- Regulatory limitations/impacts
- Hart Scott Rodino
- Private “defensive” actions
Richard S. Taffet
4:15 Ethics: How the Business Role Impacts the Attorney-Client Privilege, and Waiver Risks
- Unique issues arising from law department responsibility for a revenue-driven IP licensing business
- How to stay an ethical lawyer while driving critical business opportunities
- Managing a business and managing the litigation sometimes needed to grow that business – can one lawyer do both?
Tharan Gregory Lanier
5:15 Adjourn
Chairperson(s)
Speaker(s)
Bernard J. Cassidy ~ President; General Counsel and Executive Vice President, Tessera, Inc.
John C. Lindgren ~ President and Chief Executive Officer, MOSAID Technologies Incorporated
Gail Shulman ~ Former General Counsel of MIPS Technologies, Inc.,
Jonathan Taub ~ Executive Vice President, Acacia Research Group LLC
Jennifer B. Wuamett ~ Vice President and Chief Intellectual Property Counsel, Freescale Semiconductor, Inc.
Program Attorney(s)
John M. Mola ~ Director of California Operations, Practising Law Institute
PLI makes every effort to accredit its Live Webcasts. Please check the CLE Calculator above for CLE information specific to your state.
PLI's Live Webcasts are approved for MCLE credit (
unless otherwise noted in the product description) in the following states/territories: Alabama, Alaska, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana
1, Iowa*, Kansas*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York
2, Ohio
3, Oklahoma, Oregon*, Pennsylvania
4, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia
5, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.
*PLI will apply for credit upon request.
Arizona: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
Arkansas and Oklahoma: Audio-only live webcasts are not approved for credit.
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.
5Virginia: All distance learning courses are to be done in an educational setting, free from distractions.
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.
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, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.
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.