Intellectual Property Issues in Business Transactions 2010

Overview

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

Why You Should Attend

This program gives attendees the tools they need to assess intellectual property as a strategic asset, to consider opportunities to monetize it, and to structure business transactions so as to match business goals and avoid costly missteps.  Topics to be covered will include IP portfolio review and management, licensing, valuation, and enforcement.  The expert faculty will also review joint development, bankruptcy, tax and due diligence issues.  And as a special feature this year, we have added two panels covering the topics of due diligence and licensing from the perspectives of experts who will share their extensive experiences in the information technology, biotech and media/entertainment industries.

What You Will Learn

• How to identify the intellectual property a business should own
• How to monetize intellectual property assets
• Tips for licensing in and licensing out intellectual property
• How and when to enter strategic alliances and engage joint venture partners
• Key due diligence issues for buyers and sellers of intellectual property
• How to administer and finance an effective enforcement program
• Ethics issues arising in transactions related to intellectual property

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.

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 receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment this 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 networking 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  Opening Remarks and Introduction

9:15  Understanding the Business Objectives of IP

• How IP is obtained, e.g. invented, purchased
• Understanding what IP is core to your business
• What purpose does your IP serve?
  - Protecting your product lines against copying
  - Having something to trade in an IP dispute
  - Generating licensing revenue
  - Creating new business opportunities such as joint ventures
• Options to monetize non-core IP

Tarek N. Fahmi 

10:15  Acquiring IP and Selling-off IP

• Identifying the business case
• Acquisition of a business or only of its IP?
• What rights must you obtain to achieve your business goals? How might several assets be packaged together for sale?
• Patent auctions
• Confidentiality issues
• Anti-troll collectives for purchasing IP

Karen N. Ballack 

11:25  Networking Break

11:35  Relationships Involving IP that Will Be Shared or Jointly Developed

• Can collaboration with another company create new opportunities?
• When to create a joint venture rather than a strategic alliance
• Rights of the partners/collaborators to use newly developed IP
• IP ownership issues upon dissolution of the business

Carolyn L. Craig

12:35  Lunch

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

1:45  Industry Focus: Due Diligence of IP Assets

A panel of industry experts from the information technology, life sciences, media and entertainment industries will share their experiences and insights into the following due diligence issues as they relate particularly to their business segments.

• Understanding the business case
  - Make sure you understand why the client is making the deal
  - What, if any, IP is important to the deal
  - What, if any, IP risks exist 
• The due diligence plan
  - Understanding the time constraints
  - Coming up with a plan that allows you to prioritize the IP issues to be reviewed
  - Identifying people to be interviewed
  - Identifying outside sources for information related to the IP
• Litigation review 
• Contract review

Moderator: Michael A. Tomasulo
Panelists:  Suzanne Y. Bell, Ira Blumberg, Lothar Determann

3:15  Networking Break

3:30  Industry Focus: IP Licensing Issues

A panel of industry experts from the information technology, life sciences, media and entertainment industries will share their experiences and insights into the following licensing issues as they relate particularly to their business segments.

• Understanding the business case
  - What is the business goal?
  - What IP is necessary to achieve that goal?
  - What is the timeline for the business?
  - What are the bad case scenarios to protect against?
• Licensing issues
  - Scope
  - Grant backs
  - Improvements
  - Sublicensing rights
  - First sale issues (Quanta decision)
  - Licensee estoppel (MedImmune)
  - Enforcement
  - Antitrust issues
  - Quality control

Moderator: Edwin H. Taylor
Panelists: Suzanne Y. Bell, Ira Blumberg, Lothar Determann

5:00  Adjourn

Day Two:  9:00 a.m. - 5:00 p.m.

Morning Session:  9:00 a.m. - 12:15 p.m.

9:00  Administering an IP Licensing Program

• Selecting the IP to license
• Assessing business objectives (e.g. protection of market share, price advantage in competition, revenue generation)
• Setting appropriate goals
• Use of litigation to encourage infringers to become licensees
• Options for financing litigation

Darryl M. Woo

10:00  Bankruptcy Issues

• Extent to which a licensee of IP can preserve its license rights following a licensor's bankruptcy filing
• Implementing source code escrows in the context of a 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

 David H. Kennedy

11:00  Networking Break

11:15  Tax Issues

• Considerations when creating IP holding companies
• Taxation of royalty income
• Tax treatment of research and development costs, patent procurement costs 
• Depreciation of purchased IP assets 
• International taxation issues

Scott D. Newman

12:15  Lunch

Afternoon Session: 1:30 p.m. - 5:00 p.m.

1:30  Day-to-Day Issues for the General Counsel

• How to deal with solicited and unsolicited proposals 
• Non-disclosure agreements, invention assignment agreements 
• Considerations when using independent contractors 
• Works made for hire (and other common misunderstandings)
• Dealing with trolls

Raj Jha

2:45  IP Business Transactions over the Internet 

• Clickwrap and shrinkwrap agreements
• Establishing dates with digital time stamping
• Unauthorized use and inadvertent disclosure through metadata

Edwin H. Taylor

3:45  Networking Break

4:00  Common Ethics Issues in IP Transactions

• Potential unlicensed practice of law
  - Out-of-state clients
  - Out-of-state choice-of-law provisions 
• Ethical obligations relating to non-clients 
• What conflicts are unwaivable? 
• Duty to report attorney misconduct

David M. Simon, Jessica R. Wolff

5:00  Adjourn

Faculty

Co-Chair(s)

Speaker(s)

Program Attorney(s)

CLE Credit

Travel Information

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.