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Handling Intellectual Property Issues in Business Transactions 2008 (Live Webcast)

Apr. 28 - 29, 2008


Overview

Live Webcast on April 28-29, 2008 (P.D.T.)

This is a webcast of the live San Francisco session.

Special Note - New York Transitional credit for this program is only available to New York licensed attorneys practicing law outside the U.S.

Why You Should Attend

This comprehensive two-day program will provide an in-depth understanding of intellectual property issues that arise in corporate transactions, including Sarbanes-Oxley and Financial Accounting Standards 141/142. Topics to be covered will include the strategic role of intellectual property in company valuation and financing, licensing intellectual property in business transactions
and due diligence in intellectual property transactions.

What You Will Learn

  • Strategies in creation of intellectual property assets
  • Obtaining ownership of intellectual property assets
  • Strategies for licensing of intellectual property assets
  • Understanding open source issues
  • Maximizing the value of intellectual property assets
  • The impact of Sarbanes-Oxley and FAS 141/142 on intellectual property issues
  • Protecting intellectual property assets in the event of bankruptcy
  • Ethical issues relating to representation of intellectual property clients
  • The role of new technology in intellectual property transactions

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 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.

Schedule

All times are P.D.T.
 
Day One: 9:00 a.m. - 5:00 p.m.  (P.D.T.)
 
Morning Session: 9:00 a.m. - 12:30 p.m.  (P.D.T.)
 
9:00  Program Overview
 
Edwin H. Taylor
 
9:15  Defining the Business Objectives of Your IP
  • What IP is important to your business?
     - Patents, trademarks, copyrights, trade secrets
  • What do you want to do with your IP?
     - Protect your product lines?
     - Have something to trade in an IP dispute?
     - Create income for business?
     - Create business opportunities: Joint venture, acquisition, merger?

Tarek N. Fahmi

10:15  Acquisitions

  • Acquire the business or only the IP?
  •  What rights must you obtain for the deal to be sensible?
  • Carve outs
  • Confidentiality issues
     - What issues are different from a straight investment?
     - Opinions to obtain
     - Checklists

Karen Ikeda Ballack

11:15  Break

11:30  Joint Ventures and Strategic Alliances

  • Using IP to create a business case
  • Putting IP into the new business
  • Ownership of IP created by the new business
  • Rights of the partners to use the newly created IP
  • Dissolution of the business: Who owns what?

Gary H. Moore

12:30  Lunch

Afternoon Session:  1:45 p.m. - 5:00 p.m.  (P.D.T.)
 
1:45  Bankruptcy Issues
  • Protecting your clients IP assets in the event of bankruptcy
  • Protecting your client in the event of bankruptcy by a company who has granted a license to your client
  • Protecting your client in the event of bankruptcy by one of its licensees
  • What to do when investing in a company in jeopardy of going bankrupt

David H. Kennedy

2:45  New Technology in IP Transactions

  • Metadata: Preventing unwanted disclosures and ethical issues when using metadata
  • Current status of on-line click contracts
  • On-line data rooms and watermarking of documents
  • Digital time stamping of documents
  • Digital signatures

Edwin H. Taylor

3:45  Break

4:00  Open Source Issues

  • Warranties
  • Patent infringement
  • Due diligence
  • Sample clauses

Heather J. Meeker

5:00  Adjourn

Day Two: 9:00 a.m. - 5:00 p.m.  (P.D.T.)

Morning Session: 9:00 a.m. - 12:15 p.m.  (P.D.T.)

9:00  Licensing Your Patents

  • Critical provisions for the licensor
  • Critical provisions for the licensee
  • Checklist of topics to address
  • Strategies for negotiations

Suzanne Y. Bell

10:00  Licensing Your Trademarks

  • Critical provisions for the licensor 
  • Critical provisions for the licensee 
  • Checklist of topics to address 
    - Strategies for negotiations

Richard L. Kirkpatrick

11:00  Break

11:15  Enforcement of IP and Financing Thereof 

  • Selecting the IP to enforce
  • Selecting targets
  • Determining business objectives (licensing, protection of market share, price advantage in competition, etc.)
  • Setting a budget and monitoring expenses
  • Plaintiff's insurance
  • Third-party financing

Darryl M. Woo

12:15  Lunch

Afternoon Session:  1:45p.m. - 5:00 p.m.  (P.D.T.)

1:45  The Interplay Between IP and Sarbanes-Oxley

  • What IP events require reporting and what are best practices to meet current reporting requirements?
  • What impact does Sarbanes-Oxley have on real or perceived value of IP to a company, its shareholders and the public?

Asim Bhansali

2:45  Ethics I: Document Retention and Attorney-Client privilege

  • Rules of Professional Conduct
  • Duty to Preserve
     - When does the duty arise?
     - What is the scope of the duty - what documents/things must be retained?
     - Do standard document retention policies conflict with this duty?
     - What are your obligations as an attorney?
     - What are the sanctions for spoliation?

Alex Verbin Chachkes

3:45  Break

4:00  Ethics II: Attorney-Client Issues
  • Who is the client?
  • What is the scope of the engagement?
     - Conflict issues and permissible waivers
     - Attorney liens and pending patent and trademark files
  • Multiple jurisdiction practice
     - Under what circumstances can you practice law outside of the jurisdictions in which you are licensed to practice?
     - Which states' laws govern your ethical obligations when practicing law outside of your home state?
  • Ethical obligations relating to non-clients
     - Duty of honesty in negotiations
     - Duty of candor when practicing before the USPTO
     - Fraudulent and criminal conduct

Heidi L. Keefe, David M. Simon

5:00  Adjourn

Faculty

Chairperson(s)

Steven I. Weisburd, Dickstein Shapiro LLP

Co-Chair(s)

Edwin H. Taylor, Blakely Sokoloff Taylor & Zafman LLP

Speaker(s)

Karen N. Ballack, Weil, Gotshal & Manges LLP
Suzanne Y. Bell, Wilson Sonsini Goodrich & Rosati
Asim Bhansali, Keker,& Van Nest LLP
Alex Verbin Chachkes, Partner, Orrick, Herrington & Sutcliffe LLP
Tarek N. Fahmi, Sonnenschein Nath & Rosenthal LLP
Heidi L. Keefe, Cooley Godward Kronish LLP
David H. Kennedy, Gibson, Dunn & Crutcher LLP
Richard L. Kirkpatrick, Pillsbury Winthrop Shaw Pittman LLP
Heather J. Meeker, Shareholder, Greenberg Traurig, LLP
Gary H. Moore, Partner, Cooley Godward Kronish LLP
David M. Simon, Chief Patent Counsel, Intel Corporation
Darryl M. Woo, Fenwick & West LLP

Program Attorney(s)

Seema Lal Meehan, Program Attorney, Practising Law Institute

CLE Credit

PLI makes every effort to accredit its Live Webcasts.  Please check the CLE Calculator above for CLE information specific to your state.

PLI's Live Webcasts are approved for MCLE credit (unless otherwise noted in the product description) in the following states/territories:

Alabama, Alaska, Arizona, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana1, Iowa*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York2, Ohio3, Oklahoma, Oregon*, Pennsylvania4, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.

*PLI will apply for credit upon request.

Arkansas, Mississippi, Ohio, Oklahoma, and Rhode Island: Audio-only live webcasts are not approved for credit.

1Indiana: Considered a distance education course. There is a 6 credit limit per year.

2 New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video programs or live webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.

3Ohio: To confirm that the live webcast has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per biennial compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.

4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.

Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon speakers.

Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.

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.



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