Why you should attend
Licensing transactions are more complex than ever. The constantly evolving legal, regulatory and technical landscape drives the need to stay current in all of these key areas. Whether utilized to develop technology, expand or create market opportunities, or generate returns from existing assets, managing complex licensing transactions requires a broad and varied toolkit. Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction. This program is designed to address some of the more complex and practical issues that arise in drafting and negotiating IP licenses, as well as provide tips for specific industries. This program will feature updates on current legal developments, present case studies highlighting best practices, provide tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls, keeping the relationship on track, litigation planning and avoidance, and addressing ethics concerns. The speakers will illustrate both outside counsel and in-house perspectives.
What you will learn
- Best practices for patent and technology licensing
- Pointers for strategic alliances and other joint development agreements
- Guidance on copyright, content, and trademark licensing
- Software licensing and open source issues
- Navigating issues in life sciences licensing
- Mastering effective negotiation strategies
- Treatment of IP licenses in bankruptcy
- Addressing international licensing issues
- Practice tips for rights of publicity licensing
- Accounting for litigation risks
- Case law update
- Special considerations raised by cloud computing
- New: Indemnification
- Breakouts to meet your practice needs
- In-depth panel discussion of a complex technology license
- In-depth mock negotiation of a complex content license
- Earn one hour of Ethics credit
Who should attend
This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.
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. - 5:15 p.m.
Morning Session: 9:00 a.m. - 12:45 p.m.
Ira Jay Levy, Joseph Yang
9:15 Patent and Technology Licensing
- Avoiding the most frequently made mistakes
- Technology vs. IP vs. blended licenses
- Why patent licensing is different
- Understanding grant types and degrees of exclusivity
- Indemnification and change of control issues
- Negotiation strategies
- Comparing licensee and licensor perspectives
10:15 Copyright, Content and Trademark Licensing
- Impact of digital distribution and media on licensing issues
- Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
- The latest developments involving copyright termination of transfers and licenses
- Licensing rights in preexisting content vs. newly created content
- Licensing for social media and user-generated content
- Key contract issues and negotiating points in content licenses
- The latest on quality control considerations
- Advanced considerations in trademark and brand licensing
- Sample licensing provisions
- Case law update and licensing implications
- Implementing a brand licensing program
Mary A. Carragher, Kenneth M. Kaufman
11:30 Networking Break
I. Analysis of a Content License Agreement
- Walkthrough and mock negotiation of a complex content license agreement
- Structuring IP rights allocation
- Negotiating new media rights
- Allocating merchandising rights
- Negotiating creative, business and technology control issues
- Funding and royalty-sharing considerations
- Interplay of technology and content issues for digital content
Kenneth M. Kaufman, Jessica L. Rothstein, Mark G. Tratos
II. Analysis of a Technology License Agreement
- Walkthrough of key technology license provisions
- Common pitfalls
- Confidentiality and trade secret issues
- Restricted fields of use
- Warranties and indemnification
Mark S. Holmes, Lars S. Johnson, Carey Jordan
Afternoon Session: 1:45 p.m. - 5:15 p.m.
1:45 Software Licensing, Open Source Issues and Cloud Computing
- Source code issues
- Representations, warranties and indemnification
- Revenue sharing and auditing
- Training and support
- Keeping the relationship on track
Mark S. Holmes
Open Source Issues
- Recent developments in legal enforceability of open source licenses
- Comparing popular open source licenses
- Patent issues in open source licenses
David G. Rickerby
- What is cloud computing?
- Differences between SaaS, PaaS, and IaaS
- Overview of cloud computing legal issues
- Special contract issues raised by cloud computing arrangements
Peter J. Kinsella
3:45 Networking Break
4:00 Treatment of IP Licenses in Bankruptcy; Indemnification
- Basic concepts relevant to transactions
- Restructuring vs. liquidation
- Protecting the licensee against licensor bankruptcy
- Protecting the licensor against licensee bankruptcy
- Different treatment for different kinds of IP
- Different treatment in the various circuits
Topics will vary by city, and may include
- Overlaps/differences between R&W and indemnification
- Is “hold harmless” broader than “indemnify”?
- How patent guarantees are riskier than non-patent guarantees
- Carve outs (e.g., modifications, combinations or decisions by the licensee)
- What if the deliverable is intended for incorporation into a larger system?
- What if the deliverable is intended to be further modified?
- What if the deliverable is a design but the licensee makes the implementation choices?
- Tradeoffs vs. liability caps
- Litigation handoff when liability cap is exceeded
Themi Anagnos, Lisa S. Gretchko
Day Two: 9:00 a.m. - 4:30 p.m.
Morning Session: 9:00 a.m. - 12:15 p.m.
9:00 Litigation and Case Law Issues for Licensing Lawyers
- Strategic drafting considerations to account for litigation risks
- Pitfalls, and examples, of sloppy wording
- Impact of recent cases on drafting and negotiating
- Arbitration and other dispute resolution considerations
- Case law update
Ira Jay Levy
10:00 Strategic Alliances and Other Joint Development Agreements
- IP creation conflicts: Default laws vs. parties’ intentions
- IP allocation: Joint ownership vs. field-based ownership vs. separate entity
- IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
- IP de-allocation: Facilitating or inhibiting separation; bankruptcy
- Interplay with IP asset management
- Corporate vs. university partners
- “War stories” from real-life deals
11:00 Networking Break
I. International Licensing - Asia
- Similarities and differences between domestic and Asian licensing
- Common pitfalls for U.S. lawyers doing Asian deals
- Local law issues to be aware of
- Cultural issues in Asian transactions
Robert A. Rodriguez, Michael Stolarski
II. International Licensing - Europe
- Similarities and differences between domestic and European licensing
- Common pitfalls for U.S. lawyers doing European deals
- Local law issues to be aware of
- Cultural issues in European transactions
Afternoon Session: 1:15 p.m. - 4:30 p.m.
1:15 Ethical Considerations in Licensing
- Drafting in anticipation/avoidance of litigation
- What happens when a friendly deal turns litigious
- Deceit and candor
- Cross-border transactions
- Communications with adverse parties
Ira Jay Levy
2:15 Networking Break
I. Licensing Issues in the Life Sciences Industry
Topics will vary by city, and may include:
- Research plan
- Due diligence
- Transitioning pharmaceutical products/programs
- Monetary considerations (e.g., royalties, product returns, etc.)
- IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
- Clinical stage vs. commercialized products
- Government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
- Deal structures and governance
Marya Postner, Catherine A. Sazdanoff
II. Rights of Publicity Licensing
- “Natural” vs. statutory rights
- Lifetime vs. postmortem rights
- Rights of publicity in “identifiable objects” symbolizing a persona
- Rights of publicity releases
- Liability for violating a right of publicity
- Differences compared to copyrights and rights of privacy
Mark G. Tratos
3:30 Negotiation Skills and Tactics
- How to prepare for license negotiations
- How to use psychological tools as part of your negotiation strategy
- Consensus and bridge building
- Differences between integrative (“win-win”) and positional bargaining, and when to use each
~ Deputy General Counsel, Director of Intellectual Property for the Americas, Continental Automotive
Mary A. Carragher
~ Chief Counsel-Trademarks North America-Latin America, Mondelez Global LLC
Lars S. Johnson
~ Former Vice President, QTG/PCNA - Patent & Environmental Law, PepsiCo, Inc.
Mark G. Tratos
~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law; Greenberg Traurig, LLP
Chicago Seminar Location
University of Chicago Gleacher Center, 450 N. Cityfront Plaza Drive, Chicago, Il 60611. (312) 464-8787.
PLI programs qualify for credit in all states that require mandatory continuing legal education for attorneys. Please be sure to check with your state and the credit calculator to the right 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. PLI programs may qualify for credit based on the requirements outlined in the MCLE Regulations and Ariz. R. Sup. Ct. Rule 45.
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.