Seminar  Program

IP Issues in Business Transactions 2019


Select a Location:

Why You Should Attend

Attorneys confront intellectual property issues frequently in the context of a variety of corporate, commercial, and other business transactions. By attending this program, you will acquire, update or refine an in-depth understanding of IP considerations as they arise in business transactions.  The program will begin with a brief update of key developments, and will explore the strategic role of IP in a company and its business transactions.  Learn how to assess intellectual property as a strategic asset and how to monetize IP while avoiding costly mistakes. Expert faculty will also review joint development and shared intellectual property ventures, due diligence issues, and share best practices. This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


What You Will Learn  

  • Overview of how intellectual property issues arise in the context of transactions
  • Updated review of new issues impacting transactions related to copyright, trademark, domain names, trade secrets and patents
  • Nuts and bolts of due diligence 
  • Practice Points: Clause-by-clause analysis of a licensing agreement
  • Data and online assets in IP transactions 
  • IP in “Internet of Things” transactions
  • Panel discussion: IP issues for in-house counsel


Special Features

  • Earn one hour of Ethics credit


Who Should Attend

This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


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.

Day One: 8:55 a.m. - 5:00 p.m.

8:55 Opening Remarks

Kenneth K. Cho, Eric A. Prager


9:00 New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
  • An overview of recent developments and an analysis of their impact on transactions involving copyrights, trademarks, patents, and trade secrets
  • Adapting IP transactions to evolving business and technological landscapes

Andrew Baum, Kenneth K. Cho, Eric A. Prager, Maria A. Scungio



11:00 Networking Break



11:15 Designing, Creating, and Pruning an IP Portfolio
  • Identifying the business case for and creating an IP value chain
  • Mining IP as a strategic asset
  • Special considerations for handling non-core assets
  • How to acquire and sell IP
  • “Business” acquisitions versus “IP only” acquisitions
  • Obtaining rights: which are absolutely essential in order to achieve your business objectives?
  • Packaging assets together for sale
  • Confidentiality issues

Melvin C. Garner, Gail H. Zarick

(Skills credit for NY attorneys)


12:30 Lunch



1:30 Developing and Implementing an IP Licensing Program
  • Determining which IP to license
  • Assessing business objectives: protection of market share, price advantage in competition, revenue generation, and more
  • The process, the license, and setting appropriate goals
  • Leveraging litigation to incentivize infringers to become licensees

Jim Lennon

(Skills credit for NY attorneys)


2:30 Critical License Terms: A Clause-by-Clause Review
  • Dissecting the terms of a license and understanding the business case
  • In-depth review of terms and clauses, including:
    • Payment terms
    • Term of the license
    • Grant back provisions
    • Cross licenses
    • First sale issues
    • Sublicensing and assignability
    • Quality control
    • Special issues raised by e-commerce and social media

Kenneth K. Cho (Panel Leader); Eleanor M. Lackman, Jonathan M. Seiden



3:45 Networking Break



4:00 Shared or Jointly Developed IP
  • Creating new business opportunities or challenges through collaboration with another company
  • Joint venture versus strategic alliance – pros and cons
  • Using program IP: rights of partners and/or collaborators
  • Termination and dissolution: IP ownership issues following the collaboration

Audra A. Dial, Angela J. Grayson



5:00 Adjourn



Day Two: 9:00 a.m. - 5:00 p.m.

9:00 Data and Information Rights as Assets in Business Transactions

This session provides guidance for companies embarking on the development of data acquisition, usage, monetization and protection programs and covers topics including:

  • Value and risks of data in the digital economy
  • No data ownership – but property rights to databases, works and things containing data
  • Key considerations for data monetization programs
  • Due diligence re: data vendors
  • Sample contract clauses around data
  • Regulatory restrictions on use and value of data under GDPR, Cal Consumer Privacy Act and other privacy laws

Jami Mills Vibbert



10:00 IP Issues in International Business Transactions
  • When do international IP laws matter? Territoriality, conflicts of law, and enforcement of IP rights across borders
  • A roadmap to international IP laws in selected countries – commonalities and differences
  • Opportunities and pitfalls in international business practice with IP
  • Protecting your client’s interests in cross-border business transactions

Ricardo P. Fischer (Panel Leader); Kenneth K. Cho, Martin Köhler, Zhun Lu



11:00 Networking Break



11:15 Licensing and Bankruptcy Issues in IP Transactions
  • Preserving rights following a licensor’s bankruptcy filing
  • Structural solutions, such as assignments and licenses back, or escrows  of source code and other materials in the context of a licensor bankruptcy
  • Licensor termination or prevention of assumption or assignment of an agreement following a licensee’s bankruptcy filing 
  • Limitations on licensee rights under the bankruptcy code
  • Drafting recommendations for licensors and licensees
  • Acquiring IP from bankrupt and other distressed sellers

Debra A. Dandeneau, Jeffrey D. Osterman



12:15 Lunch



1:30 Nuts and Bolts of Due Diligence
  • Developing the IP due diligence plan
  • Time and cost restraints for diligence
  • Identifying the client’s motivation behind the deal
  • The “must-haves” in any transaction
  • IP-related risks
  • Sources of information, including company records, interviews, databases, and experts
  • Post-closing consideration

Jeffrey D. Neuburger



2:30 IP Issues for In-House Counsel
  • Managing solicited and unsolicited proposals
  • Non-disclosure agreements and invention assignment agreements
  • Independent contractors, works for hire, and other common misunderstandings
  • Compliance with licensing agreements

Kenneth K. Cho, Jack D. Slobod, Joel Wolfson, Kim Youngberg



3:45 Networking Break



4:00 Avoiding Ethics Issues in IP Transactions
  • Identifying situations involving potential unlicensed practice of law
  • Attorney ethical obligations relating to non-clients
  • When are conflicts unwaivable?
  • Attorney misconduct and duty to report

Eric A. Prager



5:00 Adjourn

Co-Chair(s)
Kenneth K. Cho ~ Kim & Chang
Eric A. Prager ~ Venable LLP
Speaker(s)
Andrew Baum ~ Foley & Lardner LLP (Ret.)
Debra A. Dandeneau ~ Baker McKenzie
Audra A. Dial ~ Kilpatrick Townsend & Stockton LLP
Ricardo P. Fischer ~ Partner, Arent Fox LLP
Melvin C. Garner ~ Leason Ellis LLP
Angela J. Grayson, CIPP/US, CLP ~ Principal Member, Precipice IP, PLLC
Martin Köhler ~ HOYNG ROKH MONEGIER
Eleanor M. Lackman ~ Cowan DeBaets Abrahams & Sheppard LLP
Jim Lennon ~ Devlin Law Firm LLC
Zhun Lu ~ Partner, Drinker Biddle & Reath LLP
Jeffrey D. Neuburger ~ Proskauer Rose LLP
Jeffrey D. Osterman ~ Weil, Gotshal & Manges LLP
Maria A. Scungio ~ Shareholder, Wolf, Greenfield & Sacks, P.C.
Jonathan M. Seiden ~ Vice President & Counsel, IMG Worldwide, LLC
Jack D. Slobod ~ General Counsel, One-Blue, LLC
Jami Mills Vibbert ~ Venable LLP
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Kim Youngberg ~ General Counsel, Screenvision Media
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute

New York City Seminar Location

PLI New York Center
, 1177 Avenue of the Americas, (2nd floor), entrance on 45th Street, New York, New York 10036. (800) 260-4754.

New York City Hotel Accommodations

Crowne Plaza Times Square Manhattan, 1605 Broadway (48th Street), New York, NY 10019 (212) 977-4000. When calling, mention Practising Law Institute. You can also make reservations online to access PLI's rates.

The Muse, 130 West 46th Street, New York, NY 10036. Please call reservations at 1-800-546-7866. When calling, please mention Practising Law Institute and Corporate Rate ID 786839408. In addition, you can book online at PLI Muse Hotel

Millennium Broadway Hotel, 145 West 44th Street, New York, NY 10036. Please call reservations at 1-800-622-5569. When calling, please mention Practising Law Institute. In addition, you can book online at PLI Millennium Hotel .

 Hyatt Times Square, 135 W. 45th Street, New York, NY 10036. For reservations, please call (646) 364-1234. When calling mention rate code CR56218 or Practising Law Institute.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live seminars may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

Why You Should Attend

Attorneys confront intellectual property issues frequently in the context of a variety of corporate, commercial, and other business transactions. By attending this program, you will acquire, update or refine an in-depth understanding of IP considerations as they arise in business transactions.  The program will begin with a brief update of key developments, and will explore the strategic role of IP in a company and its business transactions.  Learn how to assess intellectual property as a strategic asset and how to monetize IP while avoiding costly mistakes. Expert faculty will also review joint development and shared intellectual property ventures, due diligence issues, and share best practices. This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


What You Will Learn  

  • Overview of how intellectual property issues arise in the context of transactions
  • Updated review of new issues impacting transactions related to copyright, trademark, domain names, trade secrets and patents
  • Nuts and bolts of due diligence 
  • Practice Points: Clause-by-clause analysis of a licensing agreement
  • Data and online assets in IP transactions 
  • IP in “Internet of Things” transactions
  • Panel discussion: IP issues for in-house counsel


Special Features

  • Earn one hour of Ethics credit


Who Should Attend

This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


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.

Day One: 8:55 a.m. - 5:00 p.m.

8:55 Opening Remarks

Kenneth K. Cho, Eric A. Prager


9:00 New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
  • An overview of recent developments and an analysis of their impact on transactions involving copyrights, trademarks, patents, and trade secrets
  • Adapting IP transactions to evolving business and technological landscapes

Andrew Baum, Kenneth K. Cho, Eric A. Prager, Maria A. Scungio



11:00 Networking Break



11:15 Designing, Creating, and Pruning an IP Portfolio
  • Identifying the business case for and creating an IP value chain
  • Mining IP as a strategic asset
  • Special considerations for handling non-core assets
  • How to acquire and sell IP
  • “Business” acquisitions versus “IP only” acquisitions
  • Obtaining rights: which are absolutely essential in order to achieve your business objectives?
  • Packaging assets together for sale
  • Confidentiality issues

Melvin C. Garner, Gail H. Zarick

(Skills credit for NY attorneys)


12:30 Lunch



1:30 Developing and Implementing an IP Licensing Program
  • Determining which IP to license
  • Assessing business objectives: protection of market share, price advantage in competition, revenue generation, and more
  • The process, the license, and setting appropriate goals
  • Leveraging litigation to incentivize infringers to become licensees

Jim Lennon

(Skills credit for NY attorneys)


2:30 Critical License Terms: A Clause-by-Clause Review
  • Dissecting the terms of a license and understanding the business case
  • In-depth review of terms and clauses, including:
    • Payment terms
    • Term of the license
    • Grant back provisions
    • Cross licenses
    • First sale issues
    • Sublicensing and assignability
    • Quality control
    • Special issues raised by e-commerce and social media

Kenneth K. Cho (Panel Leader); Eleanor M. Lackman, Jonathan M. Seiden



3:45 Networking Break



4:00 Shared or Jointly Developed IP
  • Creating new business opportunities or challenges through collaboration with another company
  • Joint venture versus strategic alliance – pros and cons
  • Using program IP: rights of partners and/or collaborators
  • Termination and dissolution: IP ownership issues following the collaboration

Audra A. Dial, Angela J. Grayson



5:00 Adjourn



Day Two: 9:00 a.m. - 5:00 p.m.

9:00 Data and Information Rights as Assets in Business Transactions

This session provides guidance for companies embarking on the development of data acquisition, usage, monetization and protection programs and covers topics including:

  • Value and risks of data in the digital economy
  • No data ownership – but property rights to databases, works and things containing data
  • Key considerations for data monetization programs
  • Due diligence re: data vendors
  • Sample contract clauses around data
  • Regulatory restrictions on use and value of data under GDPR, Cal Consumer Privacy Act and other privacy laws

Jami Mills Vibbert



10:00 IP Issues in International Business Transactions
  • When do international IP laws matter? Territoriality, conflicts of law, and enforcement of IP rights across borders
  • A roadmap to international IP laws in selected countries – commonalities and differences
  • Opportunities and pitfalls in international business practice with IP
  • Protecting your client’s interests in cross-border business transactions

Ricardo P. Fischer (Panel Leader); Kenneth K. Cho, Martin Köhler, Zhun Lu



11:00 Networking Break



11:15 Licensing and Bankruptcy Issues in IP Transactions
  • Preserving rights following a licensor’s bankruptcy filing
  • Structural solutions, such as assignments and licenses back, or escrows  of source code and other materials in the context of a licensor bankruptcy
  • Licensor termination or prevention of assumption or assignment of an agreement following a licensee’s bankruptcy filing 
  • Limitations on licensee rights under the bankruptcy code
  • Drafting recommendations for licensors and licensees
  • Acquiring IP from bankrupt and other distressed sellers

Debra A. Dandeneau, Jeffrey D. Osterman



12:15 Lunch



1:30 Nuts and Bolts of Due Diligence
  • Developing the IP due diligence plan
  • Time and cost restraints for diligence
  • Identifying the client’s motivation behind the deal
  • The “must-haves” in any transaction
  • IP-related risks
  • Sources of information, including company records, interviews, databases, and experts
  • Post-closing consideration

Jeffrey D. Neuburger



2:30 IP Issues for In-House Counsel
  • Managing solicited and unsolicited proposals
  • Non-disclosure agreements and invention assignment agreements
  • Independent contractors, works for hire, and other common misunderstandings
  • Compliance with licensing agreements

Kenneth K. Cho, Jack D. Slobod, Joel Wolfson, Kim Youngberg



3:45 Networking Break



4:00 Avoiding Ethics Issues in IP Transactions
  • Identifying situations involving potential unlicensed practice of law
  • Attorney ethical obligations relating to non-clients
  • When are conflicts unwaivable?
  • Attorney misconduct and duty to report

Eric A. Prager



5:00 Adjourn

Co-Chair(s)
Kenneth K. Cho ~ Kim & Chang
Eric A. Prager ~ Venable LLP
Speaker(s)
Andrew Baum ~ Foley & Lardner LLP (Ret.)
Debra A. Dandeneau ~ Baker McKenzie
Audra A. Dial ~ Kilpatrick Townsend & Stockton LLP
Ricardo P. Fischer ~ Partner, Arent Fox LLP
Melvin C. Garner ~ Leason Ellis LLP
Angela J. Grayson, CIPP/US, CLP ~ Principal Member, Precipice IP, PLLC
Martin Köhler ~ HOYNG ROKH MONEGIER
Eleanor M. Lackman ~ Cowan DeBaets Abrahams & Sheppard LLP
Jim Lennon ~ Devlin Law Firm LLC
Zhun Lu ~ Partner, Drinker Biddle & Reath LLP
Jeffrey D. Neuburger ~ Proskauer Rose LLP
Jeffrey D. Osterman ~ Weil, Gotshal & Manges LLP
Maria A. Scungio ~ Shareholder, Wolf, Greenfield & Sacks, P.C.
Jonathan M. Seiden ~ Vice President & Counsel, IMG Worldwide, LLC
Jack D. Slobod ~ General Counsel, One-Blue, LLC
Jami Mills Vibbert ~ Venable LLP
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Kim Youngberg ~ General Counsel, Screenvision Media
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute
General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.

PLI’s live and on-demand webcasts are single-user license products intended for an individual registrant only. Credit will be issued only to the individual registered. If two or more individuals wish to participate in a webcast and receive credit, PLI would be happy to provide a Groupcast – group viewing of a webcast. To schedule a Groupcast, please contact PLI at groupcasts@pli.edu.


U.S. MCLE States

Alabama:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live webcasts qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

California:  PLI’s live webcasts qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live webcasts qualify as “eCLE” credit. Attorneys are limited to 12 credits of eCLE per reporting period.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live webcasts qualify as “in-house” credit. Attorneys are limited to 6 in-house credits per reporting period.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live webcasts qualify as “distance education” credit. Attorneys are limited to 9 credits of distance education per reporting period. Effective January 1, 2019, the limit of distance education per reporting period will increase from 9 to 18 credits.

Iowa:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kentucky:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Louisiana:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 4 credits of self-study per reporting period.

Maine:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Minnesota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Mississippi:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Montana:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Nebraska:  PLI’s live webcasts qualify as “computer-based learning” credit. Attorneys are limited to 5 credits of computer-based learning per reporting period.

Nevada:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live webcasts qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live webcasts can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live webcasts. Skills credits may not be earned via live webcasts.

North Carolina:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

North Dakota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Ohio:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Oklahoma:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

South Carolina:  PLI’s live webcasts qualify as “alternatively delivered” credit. Attorneys are limited to 6 credits of alternatively delivered programs per reporting period.

Tennessee:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 8 credits of distance learning per reporting period.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live webcasts qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live webcasts qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

Wisconsin:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Wyoming:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live webcasts qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live webcasts qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live webcasts can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 15 points of distance learning programs per reporting period.

United Kingdom (CPD-UK):  PLI’s live webcasts can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live webcasts may fulfill Australia’s CPD requirements. Credit limits for live webcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live webcasts may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA):  PLI’s live webcasts qualify as the “Group-Internet-Based” (GIB) delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE):  PLI’s live webcasts may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live webcasts may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live webcasts may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live webcasts may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live webcasts qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live webcasts qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live webcasts may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live webcasts may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live webcasts may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live webcasts may fulfill CFP credit requirements.

 

Why You Should Attend

Attorneys confront intellectual property issues frequently in the context of a variety of corporate, commercial, and other business transactions. By attending this program, you will acquire, update or refine an in-depth understanding of IP considerations as they arise in business transactions.  The program will begin with a brief update of key developments, and will explore the strategic role of IP in a company and its business transactions.  Learn how to assess intellectual property as a strategic asset and how to monetize IP while avoiding costly mistakes. Expert faculty will also review joint development and shared intellectual property ventures, due diligence issues, and share best practices. This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


What You Will Learn  

  • Overview of how intellectual property issues arise in the context of transactions
  • Updated review of new issues impacting transactions related to copyright, trademark, domain names, trade secrets and patents
  • Nuts and bolts of due diligence 
  • Practice Points: Clause-by-clause analysis of a licensing agreement
  • Data and online assets in IP transactions 
  • IP in “Internet of Things” transactions
  • Panel discussion: IP issues for in-house counsel


Special Features

  • Earn one hour of Ethics credit


Who Should Attend

This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


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.

Day One: 8:55 a.m. - 5:00 p.m.

8:55 Opening Remarks

Kenneth K. Cho, Eric A. Prager


9:00 New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
  • An overview of recent developments and an analysis of their impact on transactions involving copyrights, trademarks, patents, and trade secrets
  • Adapting IP transactions to evolving business and technological landscapes

Andrew Baum, Kenneth K. Cho, Eric A. Prager, Maria A. Scungio



11:00 Networking Break



11:15 Designing, Creating, and Pruning an IP Portfolio
  • Identifying the business case for and creating an IP value chain
  • Mining IP as a strategic asset
  • Special considerations for handling non-core assets
  • How to acquire and sell IP
  • “Business” acquisitions versus “IP only” acquisitions
  • Obtaining rights: which are absolutely essential in order to achieve your business objectives?
  • Packaging assets together for sale
  • Confidentiality issues

Melvin C. Garner, Gail H. Zarick

(Skills credit for NY attorneys)


12:30 Lunch



1:30 Developing and Implementing an IP Licensing Program
  • Determining which IP to license
  • Assessing business objectives: protection of market share, price advantage in competition, revenue generation, and more
  • The process, the license, and setting appropriate goals
  • Leveraging litigation to incentivize infringers to become licensees

Jim Lennon

(Skills credit for NY attorneys)


2:30 Critical License Terms: A Clause-by-Clause Review
  • Dissecting the terms of a license and understanding the business case
  • In-depth review of terms and clauses, including:
    • Payment terms
    • Term of the license
    • Grant back provisions
    • Cross licenses
    • First sale issues
    • Sublicensing and assignability
    • Quality control
    • Special issues raised by e-commerce and social media

Kenneth K. Cho (Panel Leader); Eleanor M. Lackman, Jonathan M. Seiden



3:45 Networking Break



4:00 Shared or Jointly Developed IP
  • Creating new business opportunities or challenges through collaboration with another company
  • Joint venture versus strategic alliance – pros and cons
  • Using program IP: rights of partners and/or collaborators
  • Termination and dissolution: IP ownership issues following the collaboration

Audra A. Dial, Angela J. Grayson



5:00 Adjourn



Day Two: 9:00 a.m. - 5:00 p.m.

9:00 Data and Information Rights as Assets in Business Transactions

This session provides guidance for companies embarking on the development of data acquisition, usage, monetization and protection programs and covers topics including:

  • Value and risks of data in the digital economy
  • No data ownership – but property rights to databases, works and things containing data
  • Key considerations for data monetization programs
  • Due diligence re: data vendors
  • Sample contract clauses around data
  • Regulatory restrictions on use and value of data under GDPR, Cal Consumer Privacy Act and other privacy laws

Jami Mills Vibbert



10:00 IP Issues in International Business Transactions
  • When do international IP laws matter? Territoriality, conflicts of law, and enforcement of IP rights across borders
  • A roadmap to international IP laws in selected countries – commonalities and differences
  • Opportunities and pitfalls in international business practice with IP
  • Protecting your client’s interests in cross-border business transactions

Ricardo P. Fischer (Panel Leader); Kenneth K. Cho, Martin Köhler, Zhun Lu



11:00 Networking Break



11:15 Licensing and Bankruptcy Issues in IP Transactions
  • Preserving rights following a licensor’s bankruptcy filing
  • Structural solutions, such as assignments and licenses back, or escrows  of source code and other materials in the context of a licensor bankruptcy
  • Licensor termination or prevention of assumption or assignment of an agreement following a licensee’s bankruptcy filing 
  • Limitations on licensee rights under the bankruptcy code
  • Drafting recommendations for licensors and licensees
  • Acquiring IP from bankrupt and other distressed sellers

Debra A. Dandeneau, Jeffrey D. Osterman



12:15 Lunch



1:30 Nuts and Bolts of Due Diligence
  • Developing the IP due diligence plan
  • Time and cost restraints for diligence
  • Identifying the client’s motivation behind the deal
  • The “must-haves” in any transaction
  • IP-related risks
  • Sources of information, including company records, interviews, databases, and experts
  • Post-closing consideration

Jeffrey D. Neuburger



2:30 IP Issues for In-House Counsel
  • Managing solicited and unsolicited proposals
  • Non-disclosure agreements and invention assignment agreements
  • Independent contractors, works for hire, and other common misunderstandings
  • Compliance with licensing agreements

Kenneth K. Cho, Jack D. Slobod, Joel Wolfson, Kim Youngberg



3:45 Networking Break



4:00 Avoiding Ethics Issues in IP Transactions
  • Identifying situations involving potential unlicensed practice of law
  • Attorney ethical obligations relating to non-clients
  • When are conflicts unwaivable?
  • Attorney misconduct and duty to report

Eric A. Prager



5:00 Adjourn

Co-Chair(s)
Kenneth K. Cho ~ Kim & Chang
Eric A. Prager ~ Venable LLP
Speaker(s)
Andrew Baum ~ Foley & Lardner LLP (Ret.)
Debra A. Dandeneau ~ Baker McKenzie
Audra A. Dial ~ Kilpatrick Townsend & Stockton LLP
Ricardo P. Fischer ~ Partner, Arent Fox LLP
Melvin C. Garner ~ Leason Ellis LLP
Angela J. Grayson, CIPP/US, CLP ~ Principal Member, Precipice IP, PLLC
Martin Köhler ~ HOYNG ROKH MONEGIER
Eleanor M. Lackman ~ Cowan DeBaets Abrahams & Sheppard LLP
Jim Lennon ~ Devlin Law Firm LLC
Zhun Lu ~ Partner, Drinker Biddle & Reath LLP
Jeffrey D. Neuburger ~ Proskauer Rose LLP
Jeffrey D. Osterman ~ Weil, Gotshal & Manges LLP
Maria A. Scungio ~ Shareholder, Wolf, Greenfield & Sacks, P.C.
Jonathan M. Seiden ~ Vice President & Counsel, IMG Worldwide, LLC
Jack D. Slobod ~ General Counsel, One-Blue, LLC
Jami Mills Vibbert ~ Venable LLP
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Kim Youngberg ~ General Counsel, Screenvision Media
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute
New Jersey Groupcast Location

New Jersey Institute for Continuing Legal Education, One Constitution Square, New Brunswick, NJ 08901-1520. 732-249-5100.

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

California:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Iowa:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Kansas:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Louisiana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Maine:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Minnesota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Mississippi:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Montana:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nebraska:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Nevada:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live groupcasts. Skills credits may not be earned via live groupcasts.

North Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

North Dakota:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Ohio:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oklahoma:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

South Carolina:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Tennessee:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wisconsin:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.

Wyoming:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live groupcasts.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” credit. There is no limit to the number of points an attorney can earn via live groupcasts.

United Kingdom (CPD-UK):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Australia’s CPD requirements. Credit limits for live groupcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CLPD credit requirements.


Other Credit Types

CPE Credit (NASBA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live groupcasts.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live groupcasts (i.e. live webcasts available for group viewing at co-sponsored locations) may fulfill CFP credit requirements.

 

Why You Should Attend

Attorneys confront intellectual property issues frequently in the context of a variety of corporate, commercial, and other business transactions. By attending this program, you will acquire, update or refine an in-depth understanding of IP considerations as they arise in business transactions.  The program will begin with a brief update of key developments, and will explore the strategic role of IP in a company and its business transactions.  Learn how to assess intellectual property as a strategic asset and how to monetize IP while avoiding costly mistakes. Expert faculty will also review joint development and shared intellectual property ventures, due diligence issues, and share best practices. This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


What You Will Learn  

  • Overview of how intellectual property issues arise in the context of transactions
  • Updated review of new issues impacting transactions related to copyright, trademark, domain names, trade secrets and patents
  • Nuts and bolts of due diligence 
  • Practice Points: Clause-by-clause analysis of a licensing agreement
  • Data and online assets in IP transactions 
  • IP in “Internet of Things” transactions
  • Panel discussion: IP issues for in-house counsel


Special Features

  • Earn one hour of Ethics credit


Who Should Attend

This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


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.

Day One: 8:55 a.m. - 5:00 p.m.

8:55 Opening Remarks

Karen N. Ballack, Dr. Lothar Determann


9:00 New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
  • An overview of recent developments and an analysis of their impact on transactions involving copyrights, trademarks, patents, and trade secrets
  • Adapting IP transactions to evolving business and technological landscapes

Karen N. Ballack, Jason Kipnis, Jeffrey L. Van Hoosear



11:00 Networking Break



11:15 Designing, Creating, and Pruning an IP Portfolio
  • Identifying the business case for and creating an IP value chain
  • Mining IP as a strategic asset
  • Special considerations for handling non-core assets
  • How to acquire and sell IP
  • “Business” acquisitions versus “IP only” acquisitions
  • Obtaining rights: which are absolutely essential in order to achieve your business objectives?
  • Packaging assets together for sale
  • Confidentiality issues

Karen N. Ballack, Ray Strimaitis

(Skills credit for NY attorneys)


12:30 Lunch



1:30 Developing and Implementing an IP Licensing Program
  • Determining which IP to license
  • Assessing business objectives: protection of market share, price advantage in competition, revenue generation, and more
  • The process, the license, and setting appropriate goals
  • Leveraging litigation to incentivize infringers to become licensees

Mary A. Fuller

(Skills credit for NY attorneys)


2:30 Critical License Terms: A Clause-by-Clause Review
  • Dissecting the terms of a license and understanding the business case
  • In-depth review of terms and clauses, including:
    • Payment terms
    • Term of the license
    • Grant back provisions
    • Cross licenses
    • First sale issues
    • Sublicensing and assignability
    • Quality control
    • Special issues raised by e-commerce and social media

Christian H. Nadan, Jeffrey L. Van Hoosear, Thomas F. Villeneuve



3:45 Networking Break



4:00 Shared or Jointly Developed IP
  • Creating new business opportunities or challenges through collaboration with another company
  • Joint venture versus strategic alliance – pros and cons
  • Using program IP: rights of partners and/or collaborators
  • Termination and dissolution: IP ownership issues following the collaboration

Suzanne Y. Bell



5:00 Adjourn



Day Two: 9:00 a.m. - 5:00 p.m.

9:00 Data and Information Rights as Assets in Business Transactions

This session provides guidance for companies embarking on the development of data acquisition, usage, monetization and protection programs and covers topics including:

  • Value and risks of data in the digital economy
  • No data ownership – but property rights to databases, works and things containing data
  • Key considerations for data monetization programs
  • Due diligence re: data vendors
  • Sample contract clauses around data
  • Regulatory restrictions on use and value of data under GDPR, Cal Consumer Privacy Act and other privacy laws

Dr. Lothar Determann



10:00 IP Issues in International Business Transactions
  • When do international IP laws matter? Territoriality, conflicts of law, and enforcement of IP rights across borders
  • A roadmap to international IP laws in selected countries – commonalities and differences
  • Opportunities and pitfalls in international business practice with IP
  • Protecting your client’s interests in cross-border business transactions

Chris Bollard, Anne-Kathrin Kroemer



11:00 Networking Break



11:15 Licensing and Bankruptcy Issues in IP Transactions
  • Preserving rights following a licensor’s bankruptcy filing
  • Structural solutions, such as assignments and licenses back, or escrows  of source code and other materials in the context of a licensor bankruptcy
  • Licensor termination or prevention of assumption or assignment of an agreement following a licensee’s bankruptcy filing 
  • Limitations on licensee rights under the bankruptcy code
  • Drafting recommendations for licensors and licensees
  • Acquiring IP from bankrupt and other distressed sellers

Debra A. Dandeneau, Jeffrey D. Osterman



12:15 Lunch



1:30 Nuts and Bolts of Due Diligence
  • Developing the IP due diligence plan
  • Time and cost restraints for diligence
  • Identifying the client’s motivation behind the deal
  • The “must-haves” in any transaction
  • IP-related risks
  • Sources of information, including company records, interviews, databases, and experts
  • Post-closing consideration

TBD



2:30 IP Issues for In-House Counsel
  • Managing solicited and unsolicited proposals
  • Non-disclosure agreements and invention assignment agreements
  • Independent contractors, works for hire, and other common misunderstandings
  • Compliance with licensing agreements

Martin J. Collins, Marjorie M. Goux, Kevin P. Smith



3:45 Networking Break



4:00 Avoiding Ethics Issues in IP Transactions
  • Identifying situations involving potential unlicensed practice of law
  • Attorney ethical obligations relating to non-clients
  • When are conflicts unwaivable?
  • Attorney misconduct and duty to report

Eric A. Prager



5:00 Adjourn

Co-Chair(s)
Karen N. Ballack ~ Weil, Gotshal & Manges LLP
Dr. Lothar Determann ~ Baker & McKenzie LLP
Speaker(s)
Suzanne Y. Bell ~ Covington & Burling LLP
Chris Bollard ~ Matheson
Martin J. Collins ~ Senior Vice President, Corporate Development, Legal & Compliance, QuinStreet
Debra A. Dandeneau ~ Baker McKenzie
Mary A. Fuller ~ Adjunct Professor, Santa Clara Law School
Marjorie M. Goux ~ Chief Legal Counsel, Clif Bar & Company
Jason D. Kipnis ~ WilmerHale
Anne-Kathrin Kroemer ~ Senior Director, Legal, Rubrik, Inc.
Christian H. Nadan ~ SVP & General Counsel, Actian Corporation
Jeffrey D. Osterman ~ Weil, Gotshal & Manges LLP
Eric A. Prager ~ Venable LLP
Kevin P. Smith ~ General Counsel & Chief Compliance Officer, Sirtex Medical
Ray Strimaitis ~ Vice President, Corporate Development & Global Strategy, AST
Jeffrey L. Van Hoosear ~ Knobbe Martens Olson & Bear LLP
Thomas F. Villeneuve ~ Gunderson Dettmer Stough Villeneuve Franklin & Hachigian, LLP
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute

San Francisco Seminar Location

PLI California Center, 685 Market Street, San Francisco, California 94105. (800) 260-4754.

San Francisco Hotel Accommodations

Park Central Hotel, 50 Third Street, San Francisco, CA 94103. 415-974-6400. When calling, please mention PLI and SET#287179. In addition, you may book online at Park Central Hotel PLI.

Omni Hotel San Francisco, 500 California Street, San Francisco, CA 94104. 415-677-9494.  When calling, please mention Practising Law Institute.  You may also book online at PLI Omni 2018.

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

General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.


U.S. MCLE States

Alabama: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live seminars qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

California:  PLI’s live seminars qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Illinois: All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Iowa:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Kansas:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live programs.

Kentucky:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Louisiana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Maine:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Minnesota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Mississippi:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Missouri:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Montana:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nebraska:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Nevada:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New Mexico:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live seminars can be used to fulfill the requirements for newly admitted attorneys. All credit categories may be earned via transitional live seminars.

North Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars

North Dakota:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Ohio:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oklahoma:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania: PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

South Carolina:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Tennessee:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Vermont:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live seminars qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wisconsin:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

Wyoming:  PLI’s live seminars qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live seminars.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live seminars qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live seminars qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC): PLI’s live seminars can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live seminars qualify as “live” credit. There is no limit to the number of points an attorney can earn via live seminars.

United Kingdom (CPD-UK):  PLI’s live seminars can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live seminars qualify as “live” credit in all Australian jurisdictions. There is no limit to the number of credits an attorney can earn via live seminars.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live seminars may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA): PLI’s live seminars qualify as the “Group-Live” delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE): PLI’s live seminars may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live seminars may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live seminars may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live seminars may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live seminars qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live seminars qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live seminars may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live seminars may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live seminars may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live seminars may fulfill CFP credit requirements.

 

Why You Should Attend

Attorneys confront intellectual property issues frequently in the context of a variety of corporate, commercial, and other business transactions. By attending this program, you will acquire, update or refine an in-depth understanding of IP considerations as they arise in business transactions.  The program will begin with a brief update of key developments, and will explore the strategic role of IP in a company and its business transactions.  Learn how to assess intellectual property as a strategic asset and how to monetize IP while avoiding costly mistakes. Expert faculty will also review joint development and shared intellectual property ventures, due diligence issues, and share best practices. This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


What You Will Learn  

  • Overview of how intellectual property issues arise in the context of transactions
  • Updated review of new issues impacting transactions related to copyright, trademark, domain names, trade secrets and patents
  • Nuts and bolts of due diligence 
  • Practice Points: Clause-by-clause analysis of a licensing agreement
  • Data and online assets in IP transactions 
  • IP in “Internet of Things” transactions
  • Panel discussion: IP issues for in-house counsel


Special Features

  • Earn one hour of Ethics credit


Who Should Attend

This program – essential for all IP transactional attorneys – will cover issues that may arise across patent, trademark, and copyright law.


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.

Day One: 8:55 a.m. - 5:00 p.m.

8:55 Opening Remarks

Karen N. Ballack, Dr. Lothar Determann


9:00 New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
  • An overview of recent developments and an analysis of their impact on transactions involving copyrights, trademarks, patents, and trade secrets
  • Adapting IP transactions to evolving business and technological landscapes

Karen N. Ballack, Jason Kipnis, Jeffrey L. Van Hoosear



11:00 Networking Break



11:15 Designing, Creating, and Pruning an IP Portfolio
  • Identifying the business case for and creating an IP value chain
  • Mining IP as a strategic asset
  • Special considerations for handling non-core assets
  • How to acquire and sell IP
  • “Business” acquisitions versus “IP only” acquisitions
  • Obtaining rights: which are absolutely essential in order to achieve your business objectives?
  • Packaging assets together for sale
  • Confidentiality issues

Karen N. Ballack, Ray Strimaitis

(Skills credit for NY attorneys)


12:30 Lunch



1:30 Developing and Implementing an IP Licensing Program
  • Determining which IP to license
  • Assessing business objectives: protection of market share, price advantage in competition, revenue generation, and more
  • The process, the license, and setting appropriate goals
  • Leveraging litigation to incentivize infringers to become licensees

Mary A. Fuller

(Skills credit for NY attorneys)


2:30 Critical License Terms: A Clause-by-Clause Review
  • Dissecting the terms of a license and understanding the business case
  • In-depth review of terms and clauses, including:
    • Payment terms
    • Term of the license
    • Grant back provisions
    • Cross licenses
    • First sale issues
    • Sublicensing and assignability
    • Quality control
    • Special issues raised by e-commerce and social media

Christian H. Nadan, Jeffrey L. Van Hoosear, Thomas F. Villeneuve



3:45 Networking Break



4:00 Shared or Jointly Developed IP
  • Creating new business opportunities or challenges through collaboration with another company
  • Joint venture versus strategic alliance – pros and cons
  • Using program IP: rights of partners and/or collaborators
  • Termination and dissolution: IP ownership issues following the collaboration

Suzanne Y. Bell



5:00 Adjourn



Day Two: 9:00 a.m. - 5:00 p.m.

9:00 Data and Information Rights as Assets in Business Transactions

This session provides guidance for companies embarking on the development of data acquisition, usage, monetization and protection programs and covers topics including:

  • Value and risks of data in the digital economy
  • No data ownership – but property rights to databases, works and things containing data
  • Key considerations for data monetization programs
  • Due diligence re: data vendors
  • Sample contract clauses around data
  • Regulatory restrictions on use and value of data under GDPR, Cal Consumer Privacy Act and other privacy laws

Dr. Lothar Determann



10:00 IP Issues in International Business Transactions
  • When do international IP laws matter? Territoriality, conflicts of law, and enforcement of IP rights across borders
  • A roadmap to international IP laws in selected countries – commonalities and differences
  • Opportunities and pitfalls in international business practice with IP
  • Protecting your client’s interests in cross-border business transactions

Chris Bollard, Anne-Kathrin Kroemer



11:00 Networking Break



11:15 Licensing and Bankruptcy Issues in IP Transactions
  • Preserving rights following a licensor’s bankruptcy filing
  • Structural solutions, such as assignments and licenses back, or escrows  of source code and other materials in the context of a licensor bankruptcy
  • Licensor termination or prevention of assumption or assignment of an agreement following a licensee’s bankruptcy filing 
  • Limitations on licensee rights under the bankruptcy code
  • Drafting recommendations for licensors and licensees
  • Acquiring IP from bankrupt and other distressed sellers

Debra A. Dandeneau, Jeffrey D. Osterman



12:15 Lunch



1:30 Nuts and Bolts of Due Diligence
  • Developing the IP due diligence plan
  • Time and cost restraints for diligence
  • Identifying the client’s motivation behind the deal
  • The “must-haves” in any transaction
  • IP-related risks
  • Sources of information, including company records, interviews, databases, and experts
  • Post-closing consideration

TBD



2:30 IP Issues for In-House Counsel
  • Managing solicited and unsolicited proposals
  • Non-disclosure agreements and invention assignment agreements
  • Independent contractors, works for hire, and other common misunderstandings
  • Compliance with licensing agreements

Martin J. Collins, Marjorie M. Goux, Kevin P. Smith



3:45 Networking Break



4:00 Avoiding Ethics Issues in IP Transactions
  • Identifying situations involving potential unlicensed practice of law
  • Attorney ethical obligations relating to non-clients
  • When are conflicts unwaivable?
  • Attorney misconduct and duty to report

Eric A. Prager



5:00 Adjourn

Co-Chair(s)
Karen N. Ballack ~ Weil, Gotshal & Manges LLP
Dr. Lothar Determann ~ Baker & McKenzie LLP
Speaker(s)
Suzanne Y. Bell ~ Covington & Burling LLP
Chris Bollard ~ Matheson
Martin J. Collins ~ Senior Vice President, Corporate Development, Legal & Compliance, QuinStreet
Debra A. Dandeneau ~ Baker McKenzie
Mary A. Fuller ~ Adjunct Professor, Santa Clara Law School
Marjorie M. Goux ~ Chief Legal Counsel, Clif Bar & Company
Jason D. Kipnis ~ WilmerHale
Anne-Kathrin Kroemer ~ Senior Director, Legal, Rubrik, Inc.
Christian H. Nadan ~ SVP & General Counsel, Actian Corporation
Jeffrey D. Osterman ~ Weil, Gotshal & Manges LLP
Eric A. Prager ~ Venable LLP
Kevin P. Smith ~ General Counsel & Chief Compliance Officer, Sirtex Medical
Ray Strimaitis ~ Vice President, Corporate Development & Global Strategy, AST
Jeffrey L. Van Hoosear ~ Knobbe Martens Olson & Bear LLP
Thomas F. Villeneuve ~ Gunderson Dettmer Stough Villeneuve Franklin & Hachigian, LLP
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute
General credit information about this format appears below. For credit information specific to this program, please choose your jurisdiction(s) in the Credit Information box on the right-hand side of this page.

PLI’s live and on-demand webcasts are single-user license products intended for an individual registrant only. Credit will be issued only to the individual registered. If two or more individuals wish to participate in a webcast and receive credit, PLI would be happy to provide a Groupcast – group viewing of a webcast. To schedule a Groupcast, please contact PLI at groupcasts@pli.edu.


U.S. MCLE States

Alabama:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Alaska:  All PLI products can fulfill Alaska’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Arizona:  PLI’s live webcasts qualify as “interactive CLE” credit. There is no limit to the number of credits an attorney can earn via interactive CLE programs.

Arkansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

California:  PLI’s live webcasts qualify as “participatory” credit. There is no limit to the number of credits an attorney can earn via participatory programs.

Colorado:  All PLI products can fulfill Colorado’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Connecticut: Effective January 1, 2017, all PLI products can fulfill Connecticut’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Delaware:  PLI’s live webcasts qualify as “eCLE” credit. Attorneys are limited to 12 credits of eCLE per reporting period.

Florida:  All PLI products can fulfill Florida’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Georgia:  PLI’s live webcasts qualify as “in-house” credit. Attorneys are limited to 6 in-house credits per reporting period.

Hawaii:  All PLI products can fulfill Hawaii’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Idaho:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Illinois:  All PLI products can fulfill Illinois' CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Indiana:  PLI’s live webcasts qualify as “distance education” credit. Attorneys are limited to 9 credits of distance education per reporting period. Effective January 1, 2019, the limit of distance education per reporting period will increase from 9 to 18 credits.

Iowa:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kansas:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Kentucky:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Louisiana:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 4 credits of self-study per reporting period.

Maine:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Minnesota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Mississippi:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Missouri:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Montana:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Nebraska:  PLI’s live webcasts qualify as “computer-based learning” credit. Attorneys are limited to 5 credits of computer-based learning per reporting period.

Nevada:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New Hampshire:  All PLI products can fulfill New Hampshire’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

New Jersey:  PLI’s live webcasts qualify as “alternative verifiable learning formats” credit. Attorneys are limited to 12 credits of alternative verifiable learning formats per reporting period.

New Mexico:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

New York

Experienced Attorneys:  All PLI products can fulfill New York’s CLE requirements for experienced attorneys. There is no limit to the number of credits an attorney can earn via PLI products.

Newly Admitted Attorneys:  PLI’s transitional live webcasts can be used to fulfill the requirements for New York newly admitted attorneys. Ethics credit, professional practice credit, and law practice management credit may be earned via transitional live webcasts. Skills credits may not be earned via live webcasts.

North Carolina:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

North Dakota:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Ohio:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Oklahoma:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Oregon:  All PLI products can fulfill Oregon’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Pennsylvania:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Puerto Rico:  All PLI products can fulfill Puerto Rico’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Rhode Island:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

South Carolina:  PLI’s live webcasts qualify as “alternatively delivered” credit. Attorneys are limited to 6 credits of alternatively delivered programs per reporting period.

Tennessee:  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 8 credits of distance learning per reporting period.

Texas:  All PLI products can fulfill Texas’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Utah:  PLI’s live webcasts qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Virgin Islands:  All PLI products can fulfill the Virgin Islands’ CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Virginia:  PLI’s live webcasts qualify as “live interactive” credit. There is no limit to the number of credits an attorney can earn via live interactive programs.

Washington:  All PLI products can fulfill Washington’s CLE requirements. There is no limit to the number of credits an attorney can earn via PLI products.

West Virginia:  PLI’s live webcasts qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

Wisconsin:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

Wyoming:  PLI’s live webcasts qualify as “live” credit. There is no limit to the number of credits an attorney can earn via live webcasts.

CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s live webcasts qualify as “real-time” credit. There is no limit to the number of credits an attorney can earn via real-time programs.

Ontario (CPD-ON):  PLI’s live webcasts qualify as “interactive” credit. There is no limit to the number of credits an attorney can earn via interactive programs.

Quebec (CPD-QC):  PLI’s live webcasts can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s live webcasts qualify as “distance learning” credit. Attorneys are limited to 15 points of distance learning programs per reporting period.

United Kingdom (CPD-UK):  PLI’s live webcasts can fulfill the United Kingdom’s CPD requirements.

Australia (CPD-AUS):  PLI’s live webcasts may fulfill Australia’s CPD requirements. Credit limits for live webcasts vary according to jurisdiction. Please refer to your jurisdiction’s CPD information page for specifics.

Alberta (CPD-ALBERTA):  All PLI products can fulfill Alberta’s CPD requirements. There is no limit to the number of credits an attorney can earn via PLI products.

Dubai (CLPD-DUBAI):  PLI’s live webcasts may fulfill CLPD credit requirements.

Other Credit Types

CPE Credit (NASBA):  PLI’s live webcasts qualify as the “Group-Internet-Based” (GIB) delivery method. Please check the Credit Information box on the right-hand side of this page to verify CPE credit availability.

IRS Continuing Education (IRS-CE):  PLI’s live webcasts may fulfill IRS-CE requirements. To request IRS-CE credit, please notify PLI at plicredits@pli.edu of your request and include your Preparer Tax Identification Number (PTIN).

Certified Fraud Examiner CPE:  PLI’s live webcasts may fulfill Certified Fraud Examiner CPE requirements. To request CPE credit or find out which programs offer CPE, please contact PLI at plicredits@pli.edu.

IAPP Continuing Privacy Credit (CPE):  PLI’s live webcasts may fulfill Privacy CPE credit requirements.

HR Recertification (HRCI):  PLI’s live webcasts may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s live webcasts qualify as "instructor-led" credit. There is no limit to the number of credits an SHRM professional can earn via instructor-led programs.

Compliance Certification Board (CCB):  PLI’s live webcasts qualify as “live” training events. There is no limit to the number of credits a candidate or certification holder can earn via live programs.

Certified Anti-Money Laundering Specialists (CAMS):  PLI’s live webcasts may fulfill CAMS credit requirements.

New York State Social Worker Continuing Education (SW CPE):  PLI’s live webcasts may fulfill SW CPE credit requirements.

American Bankers Association Professional Certification (ABA):  PLI’s live webcasts may fulfill ABA credit requirements.

Certified Financial Planners (CFP):  PLI’s live webcasts may fulfill CFP credit requirements.

 

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