Why you should attend
In the current economy, more and more companies are seeking to monetize their patent portfolios. Thus, understanding patent transactions has never been more important. Experts in patent licensing will cover recent legal developments; techniques for drafting agreements for patent licensing, purchases and sales; and practical advice on negotiation and enforcement considerations.
What you will learn
- Recent legal developments and practice tips
- Extensive commentary from 5 leading practitioners on actual license provisions
- How to discourage licensees from challenging the validity of licensed patents
- New strategies in light of Quanta, MedImmune and SanDisk and their progeny
- The critical differences among different types of patent transactions
- Creating win/win patent licenses
- Controversial provisions and how to negotiate them
- Drafting to avoid unenforceable agreements
- Patent and/or license enforcement considerations
- U.S. vs. foreign licensing considerations
- Ethical issues in licensing negotiations
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.
Morning Session: 9:00 a.m. - 12:30 p.m.
9:00 Program Overview
Mark S. Holmes, Joseph Yang
9:15 What’s Hot in Patent Licensing Law
- Quanta, MedImmune and SanDisk and their progeny: how licensors are trying to protect themselves from adverse case law
- How to protect yourself from patent-marking plaintiffs
- What are the big issues facing patent owners trying to license their patents?
- The crucial patent reps and warranties
- Strategies to maximize license revenue
- Licensee insists on patent indemnification: how do you respond?
Mark S. Holmes
10:15 Business and Legal Considerations in Patent Transactions
- The big difference between patent v. technology licensing
- The importance of offering a “product” that meets your “customer’s” needs
- Good (and bad) candidates for patent transactions
- Timing considerations
- Sale v. license (exclusive v. nonexclusive) v. covenant not to sue
- Threatening to enforce - whom, when, why?
Joseph Yang
11:15 Networking Break
11:30 Analysis of a Patent License Agreement
- The 30 page license agreement: where are the land mines?
- Are you a deal killer? When to kill the deal
- What makes a patent license fair for both sides?
- What are the hot legal buttons?
- Are patent owners becoming more willing to indemnify against patent infringement?
- Is it better to arbitrate?
- How far can a patent owner push before the potential licensee walks?
- Using fields of use and territorial restrictions to maximize revenues
- When to sublicense and how to protect yourself
- How 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); Michael W. Farn, Sara Duval Harrington, Winston E. Henderson, Meredith M. McKenzie
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m.
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
- Does it matter which state’s or country’s law governs?
- Let’s arbitrate in Hawaii!
- When licensees want to pay for prosecution of licensor’s patents
- Your patents have expired - can you still collect royalties?
Mark S. Holmes (Moderator); Michael W. Farn, Sara Duval Harrington, Winston E. Henderson, Meredith M. McKenzie
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 v. future products)
- What happens when licensed products are made in one country and sold elsewhere (patent coverage, royalty base, tracking, etc.)?
- The importance of reporting, auditing, etc.
- Dispute resolution issues (choice of law, arbitration, etc.)
- Reps and warranties
- Statutory restrictions (competition law, misuse, exclusivity, grantbacks)
- Cultural and other considerations
Joseph Yang (Moderator); Nader A. Mousavi, Christopher Pickett
4:00 Intersection of Ethics and Lawyers: Professional Liability in Connection with Patent Licensing Negotiations
- You doubt the validity of your client’s patent. Is there any ethical obligation to the licensee?
- When does silence become fraud?
- The parties end up in litigation. Can your firm handle the case if you will have to testify about the negotiation?
- What are the implications of professional liability claims that allege ethical breaches in connection with: competence; confidentiality of information; conflicts of interest; declining or terminating representation?
- What adverse consequences are associated with conflicts of interest in patent licensing negotiations? Disqualification motions and orders, disciplinary actions, forfeiture of fees and malpractice claims
Anthony K. Greene
5:00 Adjourn
Co-Chair(s)
Speaker(s)
Program Attorney(s)
John M. Mola ~ Director of California Operations, Practising Law Institute
San Francisco Seminar Location
PLI California Center, 685 Market Street, San Francisco, California 94105. (415) 498-2800.
San Francisco Hotel Accommodations
The Palace Hotel, 2 New Montgomery Street, San Francisco, California 94105. Call (800) 917-7456 seven days a week from 6:00 am to 12:00 am (PDT) and mention you are attending this program at Practising Law Institute to receive the preferred rate. For online reservations, go to www.sfpalace.com/pli to receive the preferred rate.
Due to high demand we recommend reserving hotel rooms as early as possible.
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Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys. All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.
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