Why you should attend
Licensing offers valuable economic and strategic opportunities. Companies are increasingly turning to licensing to gain access to intellectual property at a lower cost than developing or purchasing intellectual property assets, and as a way of generating new sources of revenue out of existing intellectual property assets. Virtually every business today must confront licensing issues. A solid base of knowledge about licensing of intellectual property has never been more important for companies and their counsel. This introductory course will give you an overview of how to negotiate and draft effective license agreements, whether you are the licensor or licensee. Experts in licensing will discuss different kinds of licensing agreements, and the business and legal issues related to them.
What you will learn
- Negotiating tips and effective drafting techniques
- How licensing can generate new revenue
- Important differences between patent and other technology licenses
- Fundamentals of trademark and copyright licensing
- Key software and open source licensing concepts and terms
- Rights of publicity and entertainment-related licensing
- International considerations, including enforcement and protection of rights
- Identifying and avoiding antitrust problems
- Managing bankruptcy and insolvency risks in IP licenses
- Hear from a litigator what happens when the agreement has to be enforced
- Regulatory and government issues to consider
Special Features
- One full hour of Ethics credit
- Mock negotiation of a license agreement
Who should attend
General practitioners, intellectual property specialists, corporate counsel and others who need to know the basics of how to license and protect their intellectual property.
Day One: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:30 p.m.
9:00 Introduction
Susan Progoff
9:15 Trademark Licensing
- Rationale for licensing
- Fundamentals of a trademark license
- Key provisions and practical considerations
Susan Progoff
10:15 Copyright Licensing
- Rationale for licensing
- Fundamentals of a copyright license
- Key provisions and practical considerations
- Creative Commons licenses
Barry Slotnick
11:15 Networking Break
11:30 Rights of Publicity and Entertainment Licensing
- Rights of publicity
- Celebrity licensing
- Television and movie licensing
- Special issues for user-generated content and the Internet
Edward H. Rosenthal
12:30 Lunch
Afternoon Session: 1:45 p.m. - 5:00 p.m.
1:45 Patent and Technology Licensing
- Standard clauses and variations
- Important differences between patent and other technology licenses
- Defining the license scope (including fields of use and territorial limits)
- Negotiating compensation (royalties, milestone payments, license fees, etc.)
- Representations, warranties, and indemnities
- Sub-licensing rights
- Handling patent licensing issues in the context of joint development and software integration projects, including rights to improvements
- Rights and responsibilities for filing, prosecution, maintenance, defense and enforcement of patent rights
Kristin Neuman
2:45 Software Licensing and Open Source Licenses
- Source code versus object code licenses
- Representations, warranties, indemnities and audit rights
- Key open source licensing concepts and terms
- License and open source compliance strategies
Jeffrey D. Osterman
3:45 Networking Break
4:00 Ethical Issues in Licensing
- Candor and deceit
- Communicating with an adverse party
- Out-of-state practice and the unauthorized practice of law
- Competence to handle negotiation
- Application of rules in actual cases
David Rabinowitz
5:00 Adjourn
Day Two: 9:00 a.m. - 4:45 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 International Considerations in Licensing
- How to approach the licensing of IP on a worldwide scale
- Dealing with issues that specifically impact licenses with foreign entities
- Drafting considerations related to protection and enforcement of rights
David A. Latham
10:00 Antitrust Issues in Licensing
- Applicable antitrust standard: Per se violations versus rule of reason
- Distinguishing between horizontal and vertical licenses
- Particular restrictions in IP licenses
- Differences between the application of U.S. and EU antitrust law to IP licenses
Yee Wah Chin
11:00 Networking Break
11:15 Bankruptcy Issues in Licensing
- Treatment of IP and IP licenses under bankruptcy law
- Consequences of your licensor, or licensee, going bankrupt
- Structuring IP transactions to take into account bankruptcy risk
- Negotiating tips to address the bankruptcy contingency
- Preserving IP rights in the face of bankruptcy
Stuart M. Riback
12:15 Lunch
Afternoon Session: 1:30 p.m. - 4:45 p.m.
1:30 Drafting for Litigation
- Hear from a litigator what happens when the agreement has to be enforced
- How to draft boilerplate for the litigators
- A litigator's perspective on negotiating several common license provisions
Bruce R. Ewing
2:30 Regulatory and Government Issues in IP Licensing
- Export control: ITAR, EAR, anti-boycott statutes, and regulated industries
- Licensing IP from the government: Required clauses, enforcement, march-in rights, and traps for the unwary
- Licensing IP to the government: Marking, monitoring, minimum rights, open source issues and remedies for infringement
- Impact of government preferences on licensing: Domestic manufacture, offshore R&D, and open-source requirements at the state and federal levels
David S. Bloch, James G. McEwen
3:30 Break
3:45 Mock Negotiation of a License Agreement
- Putting it all together; a simulated negotiation of a license agreement
- Drafting techniques and suggestions for specific clauses
- Explanation of the “real world” relevance of license provisions
- Pointers on negotiation techniques to develop compromises
- Identification of typical business terms
Edward G. Black, Mark Grossman
4:45 Adjourn
Chairperson(s)
Speaker(s)
Yee Wah Chin ~ Ingram Yuzek Gainen Carroll & Bertolotti, LLP
Program Attorney(s)
New York City Seminar Location
PLI New York Center, 810 Seventh Avenue at 53rd Street (21st floor), New York, New York 10019. Message Center, program days only: (212) 824-5733.
New York City Hotel Accommodations
Due to high demand and limited inventory in NYC, we recommend reserving hotel rooms as early as possible.
The New York Hilton & Towers, 1335 Avenue of the Americas, New York, NY 10019. 1 block from PLI Center. Reservations 1-800-HILTONS or, 1-877-NYC-HILT. Please mention that you are booking a room under the Practising Law Institute Corporate rate and the Client File # is N495741. Reservations on line at www.hilton.com and enter the same Client File # in the Corporate ID # field to access Practising Law Institute rates.
The Warwick New York Hotel, 65 West 54th Street New York, NY 10019. 1 block from PLI Center. Reservations 800-223-4099 or, hotel direct 212-247-2700. Please mention that you are booking a room under the Practising Law Institute Corporate rate. Reservations on line at www.warwickhotelny.com Click reservations in menu bar on left. Select desired dates. In 'Special Rates' drop down window select Corporate Rate. In 'Rate Code' enter PLIN. Click search and select desired room type and rate plan. Or, you may email reservation requests to: res.ny@warwickhotels.com
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