Seminar  Program

Advanced Licensing Agreements 2019


Select a Location:

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions
(IAPP Privacy credit for Privacy Professionals)

Peter J. Kinsella, David W. Tollen



12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Nathaniel Bualat, Christian H. Nadan



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

Ira Jay Levy



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

Diane Gabl Kratz



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Joseph Yang (Panel Leader); Laura Berton, Ako S. Williams



12:45 Lunch



1:45 Breakout Session No. 1b—Analysis of a Content License Agreement
  • Walkthrough and mock negotiation of a complex content license agreement
  • Structuring IP rights allocation
  • Negotiating new media rights
  • Avoiding pitfalls in allocating merchandising rights
  • How to negotiate creative, business and technology control issues
  • Considerations in funding and royalty-sharing
  • Interplay of technology and content issues for digital content

Thi Do, Mark G. Tratos



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Mark S. Holmes, Marc P. Schuyler, Joanne W. Suh



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Lindsie Goss, Marya Postner



2:45 Breakout Session No. 2b—Rights of Publicity Licensing
  • “Natural” v. statutory rights
  • Lifetime v. postmortem rights
  • Rights of publicity in “identifiable objects” symbolizing a persona
  • Rights of publicity releases
  • Liability for violating a right of publicity
  • Differences compared to copyrights and rights of privacy

Mark G. Tratos



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Laura Berton ~ Fieldfisher
Nathaniel Bualat ~ Crowell & Moring LLP
Thi Do ~ Senior Legal Director, Yahoo Holdings, Inc.
Lindsie Goss, PhD ~ Senior Technology Manager, Business Development & Strategy, Fred Hutchinson Cancer Research Center
Mark S. Holmes ~ CEO, PatentBridge LLC
Peter J. Kinsella ~ Perkins Coie LLP
Diane Gabl Kratz ~ Senior Corporate Counsel, Intellectual Property, Seagate Technology
Christian H. Nadan ~ SVP & General Counsel, Actian Corporation
Marya Postner ~ Cooley LLP
Marc P. Schuyler ~ Law Office of Marc P. Schuyler
Joanne W. Suh ~ Managing Counsel, Patent Licensing Group, Law & Policy Group, Intel Corp
David W. Tollen ~ Sycamore Legal, PC
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Ako S. Williams ~ Vice President, General Counsel and Corporate Secretary, Ushio America, Inc.
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.

 

Please be advised that only breakout sessions 1a, "Analysis of a Technology License Agreement," and 2a, "Licensing Issues in the Life Sciences Industry," will be available via Live Webcast and Groupcast.

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions

  • (IAPP Privacy credit for Privacy Professionals)

    Raymond R. Ferrell, Peter J. Kinsella




12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Paul H. Arne, Eleanor M. Yost



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

David Rabinowitz



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

 Oliver Herzfeld, Kenneth M. Kaufman



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Ira Jay Levy (Panel Leader); Grace L. Pan, Jeremy Schrire



12:45 Lunch



1:45 Breakout Session No. 1b—Analysis of a Content License Agreement
  • Walkthrough and mock negotiation of a complex content license agreement
  • Structuring IP rights allocation
  • Negotiating new media rights
  • Avoiding pitfalls in allocating merchandising rights
  • How to negotiate creative, business and technology control issues
  • Considerations in funding and royalty-sharing
  • Interplay of technology and content issues for digital content

Kenneth M. Kaufman, Tucker McCrady, Jonathan Sirota



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Melvin C. Garner, Mark S. Holmes, Gail H. Zarick



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Scott J. Catlin, Paul Fehlner, Sarah Angela Solomon



2:45 Breakout Session No. 2b—Rights of Publicity Licensing
  • “Natural” v. statutory rights
  • Lifetime v. postmortem rights
  • Rights of publicity in “identifiable objects” symbolizing a persona
  • Rights of publicity releases
  • Liability for violating a right of publicity
  • Differences compared to copyrights and rights of privacy

Mark G. Tratos



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Paul H. Arne ~ Morris, Manning & Martin, LLP
Scott J. Catlin ~ Associate Vice President for Technology Ventures, University of Rochester
Paul Fehlner ~ Chief Intellectual Property Officer, Axcella Health Inc.
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Melvin C. Garner ~ Leason Ellis LLP
Oliver Herzfeld ~ Senior Vice President & Chief Legal Officer, Beanstalk
Mark S. Holmes ~ CEO, PatentBridge LLC
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Tucker McCrady ~ Executive Vice President & General Counsel, The Orchard
Grace L. Pan ~ Kilpatrick Townsend & Stockton LLP
David Rabinowitz ~ Moses & Singer LLP
Jeremy Schrire ~ Keystone Law
Jonathan Sirota ~ Sirota Law Firm, P.C.
Sarah Angela Solomon ~ Goodwin Procter LLP
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Eleanor M. Yost ~ Carlton Fields Jorden Burt, PA
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.

 

Please be advised that only breakout sessions 1a, "Analysis of a Technology License Agreement," and 2a, "Licensing Issues in the Life Sciences Industry," will be available via Live Webcast and Groupcast.

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions

  • (IAPP Privacy credit for Privacy Professionals)

    Raymond R. Ferrell, Peter J. Kinsella




12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Paul H. Arne, Eleanor M. Yost



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

David Rabinowitz



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

 Oliver Herzfeld, Kenneth M. Kaufman



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Ira Jay Levy (Panel Leader); Grace L. Pan, Jeremy Schrire



12:45 Lunch



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Melvin C. Garner, Mark S. Holmes, Gail H. Zarick



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Scott J. Catlin, Paul Fehlner, Sarah Angela Solomon



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Paul H. Arne ~ Morris, Manning & Martin, LLP
Scott J. Catlin ~ Associate Vice President for Technology Ventures, University of Rochester
Paul Fehlner ~ Chief Intellectual Property Officer, Axcella Health Inc.
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Melvin C. Garner ~ Leason Ellis LLP
Oliver Herzfeld ~ Senior Vice President & Chief Legal Officer, Beanstalk
Mark S. Holmes ~ CEO, PatentBridge LLC
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Tucker McCrady ~ Executive Vice President & General Counsel, The Orchard
Grace L. Pan ~ Kilpatrick Townsend & Stockton LLP
David Rabinowitz ~ Moses & Singer LLP
Jeremy Schrire ~ Keystone Law
Jonathan Sirota ~ Sirota Law Firm, P.C.
Sarah Angela Solomon ~ Goodwin Procter LLP
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Eleanor M. Yost ~ Carlton Fields Jorden Burt, PA
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.

 

Please be advised that only breakout sessions 1a, "Analysis of a Technology License Agreement," and 2a, "Licensing Issues in the Life Sciences Industry," will be available via Live Webcast and Groupcast.

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions

  • (IAPP Privacy credit for Privacy Professionals)

    Raymond R. Ferrell, Peter J. Kinsella




12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Paul H. Arne, Eleanor M. Yost



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

David Rabinowitz



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

 Oliver Herzfeld, Kenneth M. Kaufman



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Ira Jay Levy (Panel Leader); Grace L. Pan, Jeremy Schrire



12:45 Lunch



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Melvin C. Garner, Mark S. Holmes, Gail H. Zarick



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Scott J. Catlin, Paul Fehlner, Sarah Angela Solomon



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Paul H. Arne ~ Morris, Manning & Martin, LLP
Scott J. Catlin ~ Associate Vice President for Technology Ventures, University of Rochester
Paul Fehlner ~ Chief Intellectual Property Officer, Axcella Health Inc.
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Melvin C. Garner ~ Leason Ellis LLP
Oliver Herzfeld ~ Senior Vice President & Chief Legal Officer, Beanstalk
Mark S. Holmes ~ CEO, PatentBridge LLC
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Tucker McCrady ~ Executive Vice President & General Counsel, The Orchard
Grace L. Pan ~ Kilpatrick Townsend & Stockton LLP
David Rabinowitz ~ Moses & Singer LLP
Jeremy Schrire ~ Keystone Law
Jonathan Sirota ~ Sirota Law Firm, P.C.
Sarah Angela Solomon ~ Goodwin Procter LLP
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Eleanor M. Yost ~ Carlton Fields Jorden Burt, PA
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute

Pittsburgh Groupcast Location

Pennsylvania Bar Institute, Professional Development Conference Center, 339 Sixth Avenue, Suite 760, Pittsburgh, Pennsylvania 15222-2517. (412) 802-2300. Click Here for Directions

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.

 

Please be advised that only breakout sessions 1a, "Analysis of a Technology License Agreement," and 2a, "Licensing Issues in the Life Sciences Industry," will be available via Live Webcast and Groupcast.

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions

  • (IAPP Privacy credit for Privacy Professionals)

    Raymond R. Ferrell, Peter J. Kinsella




12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Paul H. Arne, Eleanor M. Yost



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

David Rabinowitz



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

 Oliver Herzfeld, Kenneth M. Kaufman



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Ira Jay Levy (Panel Leader); Grace L. Pan, Jeremy Schrire



12:45 Lunch



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Melvin C. Garner, Mark S. Holmes, Gail H. Zarick



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Scott J. Catlin, Paul Fehlner, Sarah Angela Solomon



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Paul H. Arne ~ Morris, Manning & Martin, LLP
Scott J. Catlin ~ Associate Vice President for Technology Ventures, University of Rochester
Paul Fehlner ~ Chief Intellectual Property Officer, Axcella Health Inc.
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Melvin C. Garner ~ Leason Ellis LLP
Oliver Herzfeld ~ Senior Vice President & Chief Legal Officer, Beanstalk
Mark S. Holmes ~ CEO, PatentBridge LLC
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Tucker McCrady ~ Executive Vice President & General Counsel, The Orchard
Grace L. Pan ~ Kilpatrick Townsend & Stockton LLP
David Rabinowitz ~ Moses & Singer LLP
Jeremy Schrire ~ Keystone Law
Jonathan Sirota ~ Sirota Law Firm, P.C.
Sarah Angela Solomon ~ Goodwin Procter LLP
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Eleanor M. Yost ~ Carlton Fields Jorden Burt, PA
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute

Philadelphia Groupcast Location

Pennsylvania Bar Institute, The CLE Conference Center, Wanamaker Building, 10th floor, Suite 1010, Center City Philadelphia (Juniper St. entrance, between 13th & Broad Sts., opposite City Hall). (800) 932-4637. Click here for directions.

Philadelphia Groupcast Hotel Accommodations

Below is a list of hotel accommodations suggested by the Pennsylvania Bar Institute:

Marriott Residence Inn

Ritz Carlton

Loews Philadelphia

Philadelphia Marriott Downtown

Hilton Garden Inn

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.

 

Please be advised that only breakout sessions 1a, "Analysis of a Technology License Agreement," and 2a, "Licensing Issues in the Life Sciences Industry," will be available via Live Webcast and Groupcast.

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions

  • (IAPP Privacy credit for Privacy Professionals)

    Raymond R. Ferrell, Peter J. Kinsella




12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Paul H. Arne, Eleanor M. Yost



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

David Rabinowitz



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

 Oliver Herzfeld, Kenneth M. Kaufman



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Ira Jay Levy (Panel Leader); Grace L. Pan, Jeremy Schrire



12:45 Lunch



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Melvin C. Garner, Mark S. Holmes, Gail H. Zarick



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Scott J. Catlin, Paul Fehlner, Sarah Angela Solomon



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Paul H. Arne ~ Morris, Manning & Martin, LLP
Scott J. Catlin ~ Associate Vice President for Technology Ventures, University of Rochester
Paul Fehlner ~ Chief Intellectual Property Officer, Axcella Health Inc.
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Melvin C. Garner ~ Leason Ellis LLP
Oliver Herzfeld ~ Senior Vice President & Chief Legal Officer, Beanstalk
Mark S. Holmes ~ CEO, PatentBridge LLC
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Tucker McCrady ~ Executive Vice President & General Counsel, The Orchard
Grace L. Pan ~ Kilpatrick Townsend & Stockton LLP
David Rabinowitz ~ Moses & Singer LLP
Jeremy Schrire ~ Keystone Law
Jonathan Sirota ~ Sirota Law Firm, P.C.
Sarah Angela Solomon ~ Goodwin Procter LLP
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Eleanor M. Yost ~ Carlton Fields Jorden Burt, PA
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.

 

Please be advised that only breakout sessions 1a, "Analysis of a Technology License Agreement," and 2a, "Licensing Issues in the Life Sciences Industry," will be available via Live Webcast and Groupcast.

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions

  • (IAPP Privacy credit for Privacy Professionals)

    Raymond R. Ferrell, Peter J. Kinsella




12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Paul H. Arne, Eleanor M. Yost



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

David Rabinowitz



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

 Oliver Herzfeld, Kenneth M. Kaufman



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Ira Jay Levy (Panel Leader); Grace L. Pan, Jeremy Schrire



12:45 Lunch



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Melvin C. Garner, Mark S. Holmes, Gail H. Zarick



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Scott J. Catlin, Paul Fehlner, Sarah Angela Solomon



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Paul H. Arne ~ Morris, Manning & Martin, LLP
Scott J. Catlin ~ Associate Vice President for Technology Ventures, University of Rochester
Paul Fehlner ~ Chief Intellectual Property Officer, Axcella Health Inc.
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Melvin C. Garner ~ Leason Ellis LLP
Oliver Herzfeld ~ Senior Vice President & Chief Legal Officer, Beanstalk
Mark S. Holmes ~ CEO, PatentBridge LLC
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Tucker McCrady ~ Executive Vice President & General Counsel, The Orchard
Grace L. Pan ~ Kilpatrick Townsend & Stockton LLP
David Rabinowitz ~ Moses & Singer LLP
Jeremy Schrire ~ Keystone Law
Jonathan Sirota ~ Sirota Law Firm, P.C.
Sarah Angela Solomon ~ Goodwin Procter LLP
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Eleanor M. Yost ~ Carlton Fields Jorden Burt, PA
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute

Mechanicsburg Groupcast Location

Pennsylvania Bar Institute, 5080 Ritter Rd., Mechanicsburg PA 17055, (800) 932-4637. Click here for directions.

Mechanicsburg Groupcast Hotel Accommodations

Below is a list of hotel accommodations suggested by the Pennsylvania Bar Institute:

Hampton Inn Harrisburg-West, 4950 Ritter Road, Mechanicsburg, Pennsylvania, USA 17055. Tel: 717-691-1300. Fax: 717-691-9692.

Homewood Suites by Hilton® Harrisburg-West Hershey Area, 5001 Ritter Road, Mechanicsburg, Pennsylvania, United States 17055. Tel: 1-717-697-4900. Fax: 1-717-697-9101.

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.

 

Please be advised that only breakout sessions 1a, "Analysis of a Technology License Agreement," and 2a, "Licensing Issues in the Life Sciences Industry," will be available via Live Webcast and Groupcast.

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions

  • (IAPP Privacy credit for Privacy Professionals)

    Raymond R. Ferrell, Peter J. Kinsella




12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Paul H. Arne, Eleanor M. Yost



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

David Rabinowitz



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

 Oliver Herzfeld, Kenneth M. Kaufman



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Ira Jay Levy (Panel Leader); Grace L. Pan, Jeremy Schrire



12:45 Lunch



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Melvin C. Garner, Mark S. Holmes, Gail H. Zarick



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Scott J. Catlin, Paul Fehlner, Sarah Angela Solomon



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Paul H. Arne ~ Morris, Manning & Martin, LLP
Scott J. Catlin ~ Associate Vice President for Technology Ventures, University of Rochester
Paul Fehlner ~ Chief Intellectual Property Officer, Axcella Health Inc.
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Melvin C. Garner ~ Leason Ellis LLP
Oliver Herzfeld ~ Senior Vice President & Chief Legal Officer, Beanstalk
Mark S. Holmes ~ CEO, PatentBridge LLC
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Tucker McCrady ~ Executive Vice President & General Counsel, The Orchard
Grace L. Pan ~ Kilpatrick Townsend & Stockton LLP
David Rabinowitz ~ Moses & Singer LLP
Jeremy Schrire ~ Keystone Law
Jonathan Sirota ~ Sirota Law Firm, P.C.
Sarah Angela Solomon ~ Goodwin Procter LLP
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Eleanor M. Yost ~ Carlton Fields Jorden Burt, PA
Gail H. Zarick ~ IP Counsel, IBM Security Division, IBM Corporation
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute
Atlanta Groupcast Location

Atlanta Bar Association, 400 International Tower, 229 Peachtree Street, NE, Atlanta, GA 30303-1601. (404) 521-0781.

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

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.


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: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang


9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy



10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang



11:00 Networking Break

 



11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions
(IAPP Privacy credit for Privacy Professionals)

Raymond R. Ferrell, Peter J. Kinsella



12:45 Lunch



1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:

Indemnification

  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Themi Anagnos, David G. Rickerby



3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang



4:00 Networking Break



4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

Ira Jay Levy



5:15 Adjourn



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

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

Kenneth M. Kaufman, Paula Jill Krasny



10:15 Networking Break



10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes



11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Marcelo Halpern (Panel Leader); Laura Berton, Robert J. Ranucci



12:45 Lunch



1:45 Breakout Session No. 1b—Analysis of a Content License Agreement
  • Walkthrough and mock negotiation of a complex content license agreement
  • Structuring IP rights allocation
  • Negotiating new media rights
  • Avoiding pitfalls in allocating merchandising rights
  • How to negotiate creative, business and technology control issues
  • Considerations in funding and royalty-sharing
  • Interplay of technology and content issues for digital content

Kenneth M. Kaufman, Jessica L. Rothstein, Mark G. Tratos



1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Mark S. Holmes, Lars S. Johnson, Debbie K. Wright



2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Marya Postner, Lauren Rabinovic, Catherine A. Sazdanoff



2:45 Breakout Session No. 2b—Rights of Publicity Licensing
  • “Natural” v. statutory rights
  • Lifetime v. postmortem rights
  • Rights of publicity in “identifiable objects” symbolizing a persona
  • Rights of publicity releases
  • Liability for violating a right of publicity
  • Differences compared to copyrights and rights of privacy

Mark G. Tratos



3:45 Networking Break



4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each
(Skills credit for NY attorneys)

Marcelo Halpern



5:00 Adjourn

Co-Chair(s)
Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Speaker(s)
Themi Anagnos ~ Director of Intellectual Property for the Americas, Continental Automotive
Laura Berton ~ Fieldfisher
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Mark S. Holmes ~ CEO, PatentBridge LLC
Lars S. Johnson ~ Senior Counsel - Global Operations, EHS Compliance, and IP Counsel for R&D Nutrition, PepsiCo, Inc.
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Paula Jill Krasny ~ Levenfeld Pearlstein LLC
Marya Postner ~ Cooley LLP
Lauren Rabinovic ~ Divisional Vice President, IP Strategy, Abbott Laboratories
Robert J. Ranucci ~ Vice President and General Counsel, Christie Digital Systems USA, Inc.
David G. Rickerby ~ Boston Technology Law, PLLC
Jessica L. Rothstein ~ Goodwin Procter LLP
Catherine A. Sazdanoff ~ President/CEO, Sazdanoff Consulting, LLC
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Debbie K. Wright ~ Former Chief Counsel - Technology Transactions, Kraft Foods (retired)
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute

Chicago Seminar Location

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

Hotel Accommodation

Intercontinental Hotel Chicago, 505 N. Michigan Avenue, Chicago, IL 60611. (312) 944-4100. Please contact the hotel directly for the preferred rate and mention Practising Law Institute or Corporate ID 100312169.  You may also book online at PRACTISING LAW INSTITUTE.    Please note that the rate is a corporate and not a group rate. 

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

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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.

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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.

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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.

 

Related Items

On-Demand  On-Demand Programs

Advanced Licensing Agreements 2018 Mar. 13, 2018

Handbook  Course Handbook Archive

Advanced Licensing Agreements 2018 Marcelo Halpern, Perkins Coie LLP
Joseph Yang, PatentEsque Law Group, LLP
Ira Jay Levy, Goodwin Procter LLP
 
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