Why you should attend
This comprehensive program will provide an in-depth understanding of intellectual property issues that arise in corporate transactions, including the strategic role of intellectual property in a company and 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 missteps. Other essential topics addressed include IP portfolio review and management, licensing, valuation, and enforcement. An expert faculty with years of experience will also review joint development, bankruptcy, tax, 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 a must 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
- The role of social media in transactions
- New Topic! Special issues for copyright and trademark attorneys
- Special Feature! 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.
Please plan to arrive with enough time to register before the conference begins. A networking breakfast will be available upon your arrival.
Day One: 9:00 a.m. - 4:45 p.m.
Morning Session: 9:00 a.m. - 1:00 p.m.
9:00 Opening Remarks and Introduction
9:15 Designing, Creating, and Pruning an IP Portfolio
- Identifying the business case and creating an IP value chain
- Managing IP as a strategic, and 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
10:30 Networking Break
10:45 Implementing an IP Licensing Program
- Selecting the IP to license
- Assessing business objectives, including protection of market share, price advantage in competition, and revenue generation
- The process, the license, and setting appropriate goals
- Using litigation to encourage infringers to become licensees
Mary A. Fuller
11:45 Special Issues in Copyright and Trademark Law
- First sale doctrine
- Cloud computing and open source issues
- DMCA exemptions
- Contributory liability in copyright and trademark law
- Merchandising programs
- Key word advertising issues
- User-generated content issues
- Clearing, searching, and monitoring trademarks
- Mergers and acquisitions risk
Lothar Determann, Beth M. Goldman
Afternoon Session: 2:15 p.m. - 4:45 p.m.
2:15 IP Licensing Issues
A panel of experts across copyright, trademark, and patent practice areas will address important licensing considerations.
- Understanding the business case
- Business goals and what IP is necessary to achieve these goals
- Timelines 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: David A. Randall
Panelists: Christian H. Nadan, E. Lynn Perry, Thomas F. Villeneuve
3:30 Networking Break
3:45 Shared or Jointly Developed IP
- How collaboration with another company creates new business opportunities
- Joint ventures versus strategic alliances
- Using newly created IP: Rights of partners and/or collaborators
- Business dissolution and resulting IP ownership issues
Jason Kipnis, Philip Strauss
Day Two: 9:00 a.m. - 5:00 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 IP Issues for In-House Counsel
- Managing 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
10:00 Tax Issues in IP Transactions
- What is “IP” from a tax perspective?
- What are the different interests in IP for tax purposes?
- What tax issues arise in deducting the costs of developing IP?
- What are the tax issues in buying, selling, and licensing IP?
- Special issues in international IP transactions
- Case Study - Google Double Irish Dutch Sandwich Structure
- Case Study - Microsoft Corporation R&D Cost-Sharing Agreements
Linda E. Carlisle
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 solution (such as assignment and license back) or source code escrows in the context of a potential licensor bankruptcy
- Ability of IP licensor to terminate license agreement or prevent assumption or assignment of license agreement following a licensee’s bankruptcy filing
- Drafting recommendations for licensors and licensees
- Acquiring IP from bankrupt and other distressed sellers
Stanton J. Lovenworth, Suzzanne Uhland
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: David A. Randall
Panelists: Tsan Abrahamson, Marjorie M. Goux, Mark A. Valetti
2:45 IP Transactions 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?
- E-Activities - what business activities call for new entries on the due diligence checklist (e.g., social media, e-contracting, e-communicating)?
- What kinds of changes should be made to standard acquisition agreements?
- What other types of agreements implicate these issues?
Sean Hanley, Denise Vieira
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
Heidi L. Keefe, David M. Simon
~ Executive Director and Associate General Counsel, IP, Maxim Integrated Products, Inc.
Christian H. Nadan
~ Senior Director, Legal Services & Corporate Secretary, Actian Corporation
Felix S. Sterling
~ Senior Vice President and General Counsel, Trend Micro Incorporated
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.
PLI's live programs are approved in all states that require mandatory continuing legal education for attorneys, except Arizona. Please be sure to check with your state for details.
Please check the CLE Calculator above each product description for CLE information specific to your state.
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.
Please note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
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.
Credit will be granted only to the individual on record as the purchaser unless alternative arrangements (prearranged groupcast) are made in advance.