Understanding the Intellectual Property License 2009

Overview

Recently admitted NY attorneys: This program is accredited for transitional CLE credit

Why You Should Attend

During the economic downturn, companies are increasingly turning to licensing as an important way of generating new sources of revenue out of existing intellectual property assets, and as a way to gain access to intellectual property at a lower cost than developing or purchasing intellectual property assets. Virtually every business is confronting licensing issues on an increasingly frequent basis. 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 related business and legal issues.

What You Will Learn

• How licensing can generate new revenue
• Strategies for protecting IP licenses with distressed companies
• Drafting techniques and key provisions
• Fundamentals of trademark and copyright licensing
• Understanding open source issues
• Navigating the special issues for user-generated content and the Internet
• Guidelines for patent and technology licensing
• Enforcement and protection in the international arena
• Identifying and avoiding antitrust problems
• Managing bankruptcy and insolvency risks in IP licenses
• What happens when the agreement has to be enforced
• The “real world” relevance of license provisions
• Regulatory and government issues
• Earn ethics credit

Who Should Attend

General practitioners, intellectual property specialists, corporate counsel and others who need to know how to license and protect their intellectual property.

Special Features

Live Webcast - Simultaneous live webcast of the San Francisco session is available for individual viewing. Webcast participants will receive streaming audio and/or video of the program, view and print the Course Handbook, and have the ability to submit questions electronically.

For more information click on the Live Webcast link in the Related Items box.

Special Bonus to all Registrants

All attendees will receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment the program and to stand alone as a permanent reference. PLI's Course Handbooks represent the definitive thinking of the nation's finest legal minds, and are often the standard reference in the field.

Please Note: Webcast attendees will receive a downloadable version of the Handbook one business day prior to the program.

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.

Schedule

Please plan to arrive with enough time to register before the conference begins. A continental breakfast will be available upon your arrival.

Day One:  9:00 a.m. - 5:00 p.m.

Morning Session: 9:00 a.m. - 12:30 p.m.

9:00  Introduction

Marcelo Halpern

9:15  Trademark Licensing

• Rationale for licensing
• Fundamentals of a trademark license
• Key provisions and practical considerations

Liisa M. Thomas

10:15  Copyright Licensing

• Rationale for licensing
• Fundamentals of a copyright license
• Key provisions and practical considerations

John L. Hines, Jr.

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

Afternoon Session: 1:45 p.m. - 5:00 p.m.

1:45  Open Source Licenses

• Terms of major open source licenses and their impact
• Compliance issues in open source licenses
• GPLv3 - key provisions and likely issues
• Litigation and enforcement activity involving open source licenses
• Business models and strategies based on open source licensing

• Standard clauses and variations
• Strategies for exploiting technological property rights (including fields of use, territory limits, scope of rights)
• Negotiating compensation (royalties, milestone payments, license fees, etc.)
• Constraints on sub-licensing, requirements of “Up-Stream” licenses, non-competes and other restrictions
• Handling patent licensing issues in the context of joint development and software integration projects, including rights to improvements
• Coordinating patent licenses with know-how licenses or software and database licenses
• Allocating rights and responsibilities for filing, prosecution, maintenance, defense and enforcement of patent rights

• A discussion of potential ethical issues that arise in the licensing arena and how to handle them

• How to approach the licensing of a property on a worldwide scale
• Special provisions to be included in foreign licenses
• Enforcement and protection of rights

• Identifying and avoiding antitrust problems often encountered in the negotiation and drafting of license agreements, standard setting organizations, and patent litigation settlements

• 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

Afternoon Session:  1:30 p.m. - 3:30 p.m.

• Hear from a litigator what happens when the agreement has to be enforced
• How to draft boilerplate for the litigators

Stephen J. Rosenfeld

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  Adjourn

Faculty

Chairperson(s)

Speaker(s)

Program Attorney(s)

CLE Credit

Travel Information

Chicago Seminar Location
 
University of Chicago Gleacher Center, 450 N. Cityfront Plaza Drive, Chicago, Il 60611. (312) 464-8787.