This is a webcast of the live San Francisco session.Why you should attend
Attend this program to gain an in-depth understanding of intellectual property issues that arise in corporate transactions, while exploring the strategic role of intellectual property in a company and delving into the many unique considerations that come into play. Learn how to assess intellectual property as a strategic asset and how to evaluate opportunities to monetize IP while avoiding costly mistakes. Other important topics include IP portfolio review and management, licensing, valuation, and enforcement. An expert faculty will also review joint development and shared intellectual property ventures, licensing, and due diligence issues, and provide practical guidance you can rely on daily. Covering issues that may arise across patent, trademark, and copyright law, this program is essential for all IP transactional attorneys.
What you will learn
- Identifying the IP a business should own and how to monetize these assets
- Entering strategic alliances and engaging joint venture partners
- Strategies for licensing of intellectual property assets
- Due diligence tips and practice points
- Maximizing the value of intellectual property assets
- Licensing considerations in a bankruptcy context
- Special considerations concerning data and online assets
- New topic! Understanding the social media ecosphere
- Plus - Earn one full hour of ethics credit!
Who should attend
This program is designed for corporate counsel, intellectual property attorneys, corporate attorneys, intellectual property asset managers and others who need to know how to identify and address key intellectual property issues that arise in corporate transactions.
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.S.T.
Day One: 9:00 a.m. - 5:00 p.m. (P.S.T.)
Morning Session: 9:00 a.m. - 12:30 p.m. (P.S.T.)
9:00 Overview: How IP Issues Arise in Business Transactions
- Pure intellectual property transactions
- Transactions involving significant IP components
- Transactions involving tangential IP components
New Legal Issues Impacting IP Transactions: Copyrights
- New developments and how they have affected business transactions involving copyrights
- Legislative developments
- Adapting to the changing business environment
Karen N. Ballack, Lothar Determann
10:00 New Legal Issues Impacting IP Transactions (cont’d): Trademarks, Domain Names, Patents, and Trade Secrets
- New developments and how they have affected business transactions involving trademarks and domain names, patents, and trade secrets
- Legislative developments
- Adapting to the changing business environment
David Almeling, Jason Kipnis
11:00 Networking Break
11:15 Designing, Creating and Pruning an IP Portfolio
- Identifying the business case and creating an IP value chain
- Managing IP as a strategic, not just legal, asset
- Dealing with non-core assets
- Acquiring and selling off IP
- Acquisition of a business versus acquisition of its IP only
- Which rights must you obtain to achieve your business goals?
- Packaging several assets together for sale
- Confidentiality issues
- Anti-troll collectives for purchasing IP
Karen N. Ballack, Mark A. Valetti
12:30 Lunch
Afternoon Session: 1:30 p.m. - 5:00 p.m.
1:30 Implementing an IP Licensing Program
- Selecting the IP to license
- Assessing business objectives including protection of market share, price advantage in competition, revenue generation
- The process, the license, and setting appropriate goals
- Using litigation to encourage infringers to become licensees
Mary A. Fuller
2:30 Licensing Panel
- Understanding the business case
- Goals of the business and what IP is necessary to achieve these goals
- Timeline for the business
- Protecting against negative scenarios
- Licensing issues
- Payment terms
- Term of the license
- Grant back provisions
- Cross licenses
- First sale issues
- Sublicensing and assignability
- Quality control
- Issues raised by e-commerce and social media
Moderator: Tessa J. Schwartzman
Panelists: Christian H. Nadan, E. Lynn Perry, Thomas F. Villeneuve
3:45 Networking Break
4:00 Shared or Jointly Developed IP
- How collaboration with another company creates new business opportunities or business challenges
- Joint venture versus strategic alliances
- Using program IP: Rights of partners and/or collaborators
- Termination and Dissolution: IP ownership issues following the collaboration
Michael S. Rabson
5:00 Adjourn
Day Two: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 Understanding the Social Media Ecosphere
- Identifying the business case for social media
- What information/data is collected through the use of social media?
- Why is the information/data collected, what does the company do with it and what is its value to the company?
- How information/data is collected and where it is stored
- How companies monetize social media
- How companies measure social media efficacy and success
TBD
10:00 IP and Related Issues Concerning Data, Social Media and Online Assets
- Data: What is it legally? Who owns it? How can it be transferred? What special risks does it pose?
- Duties to secure data and allocation of risks and burdens relating to breach
- Privacy restrictions and obligations relating to use of personal data
- E-Activities - What business activities call for new items or requests on the due diligence checklist (e.g. social media, e-contracting, e-communicating)?
- What kinds of changes should be made to standard acquisition agreements?
Susan Lyon-Hintze
11:00 Networking Break
11:15 Licensing and Bankruptcy Issues in IP Transactions
- How might a licensee preserve its rights following a licensor's bankruptcy filing?
- Implementing structural solutions (such as assignments and licenses back) or source code escrows in the context of a licensor bankruptcy
- Ability of an IP licensor to terminate a license agreement or prevent assumption or assignment of a license agreement following a licensee’s bankruptcy filing
- Drafting recommendations for licensors and licensees
- Acquiring IP from bankrupt and other distressed sellers
- International bankruptcy law applying to IP licenses
Stanton J. Lovenworth, Suzzanne Uhland
12:15 Lunch
Afternoon Session: 1:30 p.m. - 5:00 p.m.
1:30 Due Diligence of IP Assets
A panel of experts will address due diligence issues as they relate to copyright, trademark, and patent practice areas.
- Understanding the business case
- Why is the client doing the deal?
- What is important to the deal and what are the potential IP risks?
- The due diligence plan
- Time constraints
- Developing a plan to prioritize review of IP issues
- Identifying sources to be interviewed and outside sources for additional information related to the IP
- Litigation review
- Contract review
Moderator: Philip Strauss
Panelists: Tsan Abrahamson, Marjorie Goux, Mark A. Valetti
2:45 IP Issues for In-House Counsel
- Managing with solicited and unsolicited proposals
- Non-disclosure agreements and invention assignment agreements
- Independent contractors, works for hire (and other common misunderstandings)
- Compliance with licenses
Felix S. Sterling (Invited)
3:45 Networking Break
4:00 Common Ethics Issues in IP Transactions
- Potential unlicensed practice of law
- Ethical obligations relating to non-clients
- When are conflicts unwaivable?
- Attorney misconduct and duty to report
TBD
5:00 Adjourn
Co-Chair(s)
Speaker(s)
Mary Fuller ~ Executive Director and Associate General Counsel, IP, Maxim Integrated Products, Inc.
Christian H. Nadan ~ Vice President of Legal Services & Corporate Secretary, Actian Corporation
Felix S. Sterling ~ Senior Vice President and General Counsel, Trend Micro Incorporated
Program Attorney(s)
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.