transcript   Transcript

Analysis of a Patent License Agreement

Recorded on: Sep. 28, 2017
Running Time: 02:00:19

Full Transcript:

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Taken from the Web Program Advanced Patent Licensing 2017 recorded September 2017 in San Francisco.

Analysis of a Patent License Agreement [02:00:18]
  • Learn from experienced licensing attorneys using clauses taken from actual agreements
  • The 60 page license agreement:  Know where the land mines are?
  • Are you a deal killer?  When to kill the deal
  • When licensees want to pay for prosecution of licensor's patents 
  • Using fields of use to maximize revenues
  • When to sublicense and how to protect yourself
  • Not all licenses are created equal: how to get the upper hand
  • Are patent owners becoming more willing to indemnify against patent infringement?
  • You want to pay me in what currency? How to get royalties back to the States
  • Is it better to arbitrate?
  • A bridge too far? How far can a licensor push before the potential licensee walks?
  • Fields of Use or Fields of Dreams: territorial and use restrictions can maximize revenues
  • Why negotiating licenses are different from M&A and other transactions

Mark S. Holmes, Panel Leader; William H. Hamby, Winston E. Henderson, Meredith M. McKenzie, Jennifer Zanocco

The purchase price of this segment includes the following article from the Course Handbook available online:

  • Specimen Provisions from Patent License Agreements; Excerpts reprinted from Practising Law Institute, Patent Licensing and Selling: Strategy, Negotiation & Forms (2nd Edition)
    Mark S. Holmes
  • Mark S. Holmes, Ch. 17: Strategies for the New Patent Law Frontier, Practising Law Institute, Patent Licensing and Selling: Strategy, Negotiation & Forms (2nd Edition) (November 2016)
    Mark S. Holmes
William H Hamby ~ Corporate Counsel, Specialty Products Division, E.I. DuPont de Nemours & Co
Winston E Henderson ~ Vice President, General Counsel, Nano Terra, Inc.
Mark S Holmes ~ CEO, PatentBridge LLC
Meredith M McKenzie ~ Vice President & Deputy General Counsel, Juniper Networks, Inc.
Jennifer Zanocco ~ Patent Counsel, Google
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