Advanced Licensing Agreements 2010

Overview

Why You Should Attend

Companies have always used licensing to obtain technology and content outside their core areas or at lower cost, and/or to monetize their own offerings. In the current era of falling budgets and the need to replace lost revenue, this has become more important than ever. 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 as well as practical issues that arise in drafting and negotiating IP licenses. The program will feature updates on current legal developments, best practices, negotiating frequently contested issues, identifying and avoiding common pitfalls, keeping the relationship on track, litigation planning and avoidance, and ethics. The speakers will illustrate both outside counsel and in-house perspectives.

What You Will Learn

• Learn how to draft patent and technology licenses
• Understand critical issues regarding software licensing and open source licenses
• Obtain pointers for strategic alliances and other joint development agreements
• Receive guidelines for trade secret licensing
• Analyze important issues in international licensing
• Get guidance on copyright, content, and trademark licensing
• Master negotiation strategies

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.

Special Features

• In-depth panel discussion of a complex technology license
• In-depth mock negotiation of a complex content license
• Treatment of IP licenses in bankruptcy
• Earn ethics credit

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

First Day:  9:00 a.m. - 5:15 p.m.

Morning Session:  9:00 a.m. - 1:00 p.m.

9:00  Introduction

Ira J. 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

Joseph Yang

10:15  Special Issues in Trade Secret Licensing

• Differences in protection from state to state
• Differences in enforcement from state to state
• Protecting the trade secret in case of unauthorized disclosure
• Drafting considerations and sample clauses
• Special considerations compared to licensing other IP asset types

Peter J. Kinsella

11:15  Networking Break

11:30  Copyright, Content, and Trademark Licensing

• Old media vs. new media, e-publishing & Tasini issues
• Digital rights management (DRM) and related issues
• Licensing rights in preexisting content vs. newly created content
• The latest on quality control considerations
• The latest on trademark licensing
• Sample licensing provisions
• Case law update and licensing implications

Sally M. Abel, Kenneth M. Kaufman

1:00 Lunch

Afternoon Session:  2:00 p.m. - 5:15 p.m.

2:00  Software Licensing

• Source code issues
• Representations, warranties and indemnification
• Revenue sharing and auditing
• Training and support
• Keeping the relationship on track

Mark S. Holmes

3:00  Networking Break

3:15  BREAKOUTS

I. Analysis of a Content License Agreement

• Walkthrough and mock negotiation of a complex content license agreement by an expert panel
• Structuring IP rights allocation
• Negotiating multimedia rights
• Allocating merchandising rights
• Negotiating creative control issues
• Funding and royalty sharing considerations
• Interplay of technology and content issues for digital content

Kenneth M. Kaufman, Katherine C. Spelman, Mark G. Tratos

II. Analysis of a Technology License Agreement

• Common pitfalls
• Confidentiality and trade secret issues
• Exclusivity
• Restricted fields of use
• Specifications
• Warranties and indemnification

Lucy J. Billings, Mark S. Holmes, Marc P.  Schuyler

4:15  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

Joseph Yang

5:15  Adjourn

Second Day:  9:00 a.m. - 4:30 p.m.

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

9:00  Database License Agreements / Open Source Issues

• Database protection under U.S. and E.U. law
• Key points in negotiating database licenses
• Recent developments in database protection and litigation
• Recent developments in legal enforceability of open source licenses
• Comparing popular open source licenses
• Patent issues in open source licenses

Christian H. Nadan, Mark G. Tratos

10:00  Litigation Planning for Licensing Lawyers

• Warranties, indemnification and other frequently litigated provisions
• Pitfalls, and examples, of sloppy wording
• Contra proferentum and other contract interpretation doctrines
• Alternative dispute resolution
• Case law update
• Foreign litigants and/or venues

Ira J. Levy 

11:00  Networking Break

11:15  BREAKOUTS

I.  International Licensing - Asia

• Similarities and differences between domestic and Asian licensing
• Common pitfalls for U.S. lawyers doing Asian deals
• Licensing in Asia
• Cultural issues in Asian transactions

Naomi Abe Voegtli

II.  International Licensing - Europe

• Similarities and differences between domestic and European licensing
• Common pitfalls for U.S. lawyers doing European deals
• Licensing in Europe
• Cultural issues in European transactions

Guy Heath

12:15  Lunch

Afternoon Session:  1:15 p.m. - 4:30 p.m.

1:15  Treatment of IP Licenses in Bankruptcy

• Basic concepts relevant to transactions
• Restructuring v. 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

Suzzanne Uhland

2:15  Networking Break

2:30  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

Donna Shestowsky 

3:30  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 J. Levy

4:30  Adjourn

Faculty

Co-Chair(s)

Ira Jay Levy, Goodwin Procter LLP
Joseph Yang, PatentEsque Law Group, LLP

Speaker(s)

Sally M. Abel, Fenwick & West LLP
Lucy J. Billings, Vice President, Legal, Tercica, Inc.
Guy Heath, Nabarro LLP
Mark S. Holmes, CEO, PatentBridge LLC
Kenneth M. Kaufman, Manatt, Phelps & Phillips, LLP
Peter J. Kinsella, Perkins Coie LLP
Christian H. Nadan, Former Deputy General Counsel & Senior Director Software Legal, Sun Microsystems, Inc.
Marc P. Schuyler, Schuyler Law Group
Donna Shestowsky, Professor of Law, University of California, Davis School of Law
Katherine C. Spelman, Cobalt LLP
Mark G. Tratos, Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law; Greenberg Traurig, LLP
Suzzanne Uhland, O'Melveny & Myers LLP
Naomi Abe Voegtli, Vice President, Global IP -- Asia Pacific, Global IP Strategy and Standards, SAP

Program Attorney(s)

Tamara C. Kiwi, Program Attorney, Practising Law Institute

CLE Credit

Travel Information

Due to high demand we recommend reserving hotel rooms as early as possible.