On-Demand   On-Demand Web Programs

IP Issues in Business Transactions 2017

Released on: Jan. 17, 2017
Running Time: 12:48:10

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

You will learn:

  • Overview of how intellectual property arises in the context of transactions
  • Updated review of new issues impacting transactions related to copyright, trademark, domain names, trade secrets and patents
  • Nuts and bolts of due diligence
  • Practice Points: Clause-by-clause analysis of a licensing agreement
  • Data and online assets in IP transactions
  • New Topic! An international perspective on IP issues in business transactions
  • Panel discussion: IP issues for in-house counsel

This program is designed for in-house counsel, intellectual property attorneys, corporate attorneys, intellectual property asset managers and others who need to know how to identify and address key intellectual property issues that arise in corporate transactions.


Lecture Topics [Total time 12:48:10]

Segments with an asterisk (*) are available only with the purchase of the entire program.


  • Introduction* [00:03:22]
  • New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets [01:54:49]
    Andrew Baum (Ret.), Clark W. Lackert, Eric A. Prager, Steven I. Weisburd, Dr. Lothar Determann
  • Case Study: Designing, Creating, and Pruning an IP Portfolio [01:17:24]
    Melvin C. Garner, Gail H. Zarick
  • Development and Implementation of an IP Licensing Program [00:57:15]
    Mark S. Raskin
  • Critical License Terms: A Clause-by-Clause Review [01:17:28]
    Steven I. Weisburd, Kenneth K. Cho, Eleanor M. Lackman, Jonathan M. Seiden
  • Shared or Jointly Developed IP [00:59:09]
    Audra A. Dial, Angela J. Grayson
  • IP Issues in International Business Transactions [00:59:32]
    Kenneth K. Cho, Ricardo P Fischer, Zhun Lu, Philippe Claude, Philippe Claude
  • IP in IoT Transactions – Connected Cars and other Computers within the Internet of Everything [01:02:49]
    Dr. Lothar Determann, Vineet Shahani
  • Licensing and Bankruptcy Issues in IP Transactions [01:00:53]
    Debra Dandeneau, Jeffrey D. Osterman
  • Nuts and Bolts of Due Diligence [01:14:28]
    Jeffrey D. Neuburger
  • IP Issues for In-House Counsel [01:01:18]
    Carolyn H. Blankenship, Joel Wolfson, Eric A. Prager
  • Avoiding Ethics Issues in IP Transactions [00:59:43]
    Eric A. Prager

The purchase price of this Web Program includes the following articles from the Course Handbook available online:


  • COMPLETE COURSE HANDBOOK
  • New Harmonized Laws and Measures to Protect Trade Secrets
    Lothar Determann, Luisa Schmaus, Jonathan Tam
  • What Happens in the Cloud: Software as a Service and Copyrights
    Lothar Determann
  • Top 10 Misconceptions About Copyright
    Andrew Baum
  • Fair Use in the Copyright Act
    Andrew Baum
  • Kirtsaeng v. John Wiley & Sons, Inc., No. 15–375, Slip Op. (2d. Cir. June 16, 2016)
    Andrew Baum
  • Varsity Brands, Inc. v. Star Athletica, LLC, No. 14-5237, Slip Op. (6th Cir. Aug. 19, 2015)
    Andrew Baum
  • Designing, Creating and Managing an IP Portfolio
    Melvin C. Garner
  • Administering an IP Licensing Program
    Alfred R. Fabricant
  • Essential Elements of the License Agreement
    Eric A. Prager
  • Collaboration: Opportunities and Challenges
    Mark F. Radcliffe
  • Bendix Aviation Corp. v. Kury, 88 F.Supp. 243 (E.D.N.Y. 1950)
    Audra A. Dial
  • Eli Lilly and Co. v. Emisphere Technologies, Inc., 408 F.Supp.2d 668 (S.D. Ind. 2006)
    Audra A. Dial
  • STC.UNM v. Intel Corp., No. 2013-1241, Slip Op. (Fed. Cir. June 6, 2014)
    Audra A. Dial
  • Willingham v. Star Cutter Co., 555 F.2d 1340 (6th Cir. 1977)
    Audra A. Dial
  • Akzo Nobel Coatings Inc. v. Dow Chemical Co., C.A. No. 8666-VCP, 2015 WL 3536151 (Del. Ch. June 5, 2015)
    Angela J. Grayson
  • Coda Development s.r.o. v. Goodyear Tire & Rubber Co., No. 5:15-cv-1572, 2016 WL 5463058 (N.D. Ohio Sept. 29, 2016)
    Angela J. Grayson
  • Pub. L. No. 114-153, Defend Trade Secrets Act of 2016 (May 11, 2016)
    Angela J. Grayson
  • Ross-Hime Designs, Inc. v. United States, 109 Fed. Cl. 725 (Fed. Cl. Mar. 13, 2013)
    Angela J. Grayson
  • Enforcement of IP Rights in Russia: International, Conflict of Laws, and Policy Considerations (November 16, 2016)
    Andrey Gavrilenko
  • Key International IP Issues in the Digital Economy (February 2017)
    David Cullen
  • Open Cars
    Lothar Determann, Bruce Perens
  • The Interplay Between Intellectual Property Rights and Bankruptcy (November 4, 2016)
    Debra A. Dandeneau
  • Protecting the Value of Your Company’s IP for a Successful Acquisition (2013)
    Kira Kimhi, TJ Graham
  • New Media and Technology Law Blog
    Jeffrey D. Neuburger
  • Sample Mutual Confidentiality Agreement
    Joel R. Wolfson
  • Sample Confidentiality and Intellectual Property Agreement
    Eric A. Prager
  • Sample Trade Secret Policy
    Eric A. Prager
  • Ethics Issues in Intellectual Property Practice
    Eric A. Prager

Presentation Material


  • New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
    Andrew Baum (Ret.)
  • New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
    Dr. Lothar Determann
  • New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
    Clark W. Lackert
  • New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
    Eric A. Prager
  • New IP Issues Impacting Business Transactions: Copyrights, Trademarks, Domain Names, Patents and Trade Secrets
    Steven I. Weisburd
  • Case Study: Designing, Creating, and Pruning an IP Portfolio
    Gail H. Zarick
  • Case Study: Designing, Creating, and Pruning an IP Portfolio
    Melvin C. Garner
  • Development and Implementation of an IP Licensing Program
    Mark S. Raskin
  • Critical License Terms: A Clause-by-Clause Review
    Kenneth K. Cho, Eleanor M. Lackman, Jonathan M. Seiden, Steven I. Weisburd
  • Shared or Jointly Developed IP
    Audra A. Dial, Angela J. Grayson
  • IP in IoT Transactions – Connected Cars and other Computers within the Internet of Everything
    Dr. Lothar Determann, Vineet Shahani
  • Licensing and Bankruptcy Issues in IP Transactions
    Debra Dandeneau, Jeffrey D. Osterman
  • Nuts and Bolts of Due Diligence
    Jeffrey D. Neuburger
  • IP Issues for In-House Counsel
    Joel Wolfson
  • Avoiding Ethics Issues in IP Transactions
    Eric A. Prager
Chairperson(s)
Steven I. Weisburd ~ Arent Fox LLP
Co-Chair(s)
Dr. Lothar Determann ~ Baker & McKenzie LLP
Eric A. Prager ~ K&L Gates LLP
Moderator(s)
Ricardo P Fischer ~ Partner, Arent Fox LLP
Speaker(s)
Andrew Baum (Ret.) ~ Foley & Lardner LLP
Carolyn H. Blankenship ~ Senior Vice President, Associate General Counsel, Intellectual Property, Thomson Reuters
Kenneth K. Cho ~ Kim & Chang
Philippe Claude ~ Associate General Counsel - Marketing Properties, Mars
Debra Dandeneau ~ Baker & McKenzie
Audra A. Dial ~ Kilpatrick Townsend & Stockton
Melvin C. Garner ~ Leason Ellis LLP
Angela J. Grayson, CIPP/US, CLP ~ Principal Member, Precipice IP, PLLC
Clark W. Lackert ~ Reed Smith LLP
Eleanor M. Lackman ~ Cowan DeBaets Abrahams & Sheppard LLP
Zhun Lu ~ Partner, Drinker Biddle & Reath LLP
Jeffrey D. Neuburger ~ Proskauer Rose LLP
Jeffrey D. Osterman ~ Weil, Gotshal & Manges LLP
Mark S. Raskin ~ Partner, Mishcon de Reya New York LLP
Jonathan M. Seiden ~ Vice President & Counsel, SFX Entertainment, Inc.
Vineet Shahani ~ Director, Legal, Nest Labs,Inc
Joel Wolfson ~ Director and Assistant General Counsel, Bank of America Merrill Lynch
Gail H. Zarick ~ IP Counsel, Security Division, IBM Corporation
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.


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Arkansas:  PLI’s on-demand web programs are not approved for Arkansas CLE credit.

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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 on-demand web programs qualify as “eCLE” credit. Attorneys are limited to 12 credits of eCLE per reporting period, no more than 6 of which may be audio-only.

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Missouri:  PLI’s on-demand web programs qualify as “self-study” credit. Attorneys are limited to 6 credits of self-study per reporting period.

Montana:  PLI’s on-demand web programs qualify as “self-study” credit. Attorneys are limited to 5 credits of self-study per reporting period.

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

Nevada:  PLI’s on-demand web programs qualify as “self-study” credit. There is no limit to the number of credits an attorney can earn via self-study programs.

New Hampshire:  PLI’s on-demand web programs qualify as “self-study” credit. Attorneys are limited to 6 credits of self-study per reporting period.

New Jersey:  PLI’s on-demand web programs 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 on-demand web programs qualify as “self-study” credit. Attorneys are limited to 4 credits of self-study per reporting period.

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 on-demand web programs can be used to fulfill the requirements for New York newly admitted attorneys. Only professional practice and law practice management credits may be earned via transitional on-demand web programs. Ethics and skills credits may not be earned via on-demand web programs.

North Carolina:  PLI’s on-demand web programs qualify as “online” credit. Attorneys are limited to 6 credits of online programs per reporting period.

North Dakota:  PLI’s on-demand web programs qualify as “self-study” credit. Attorneys are limited to 15 credits of self-study per reporting period.

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

Oklahoma:  PLI’s on-demand web programs qualify as “online, on-demand” credit. Attorneys are limited to 6 credits of online, on-demand programs per reporting period.

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Pennsylvania:  PLI’s on-demand web programs qualify as “distance learning” credit. Attorneys are limited to 6 credits of distance learning per reporting period.

Puerto Rico:  PLI’s on-demand web programs qualify as “non-traditional” credit. Attorneys are limited to 8 credits of non-traditional programs per reporting period.

Rhode Island:  PLI’s on-demand web programs qualify as “on-demand” credit. Attorneys are limited to 3 on-demand credits per reporting period.

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

Tennessee:  PLI’s on-demand web programs 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 on-demand web programs qualify as “self-study” credit. Attorneys are limited to 12 credits of self-study per reporting period.

Vermont:  PLI’s on-demand web programs qualify as “self-study” credit. Attorneys are limited to 10 credits of self-study per reporting period.

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 on-demand web programs qualify as “pre-recorded” credit. Attorneys are limited to 8 credits of pre-recorded programs per reporting period.

Washington:  PLI’s on-demand web programs qualify as “A/V” credit. Attorneys are limited to 22.5 credits of A/V programs per reporting period.

West Virginia:  PLI’s on-demand web programs qualify as “online” credit. Attorneys are limited to 12 credits of online instruction per reporting period.

Wisconsin:  PLI’s on-demand web programs qualify as “repeated, on-demand” credit. Attorneys are limited to 15 credits of repeated, on-demand programs per reporting period. No ethics credits can be earned via on-demand web programs.

Wyoming:  PLI’s on-demand web programs qualify as “self-study” credit. Attorneys are limited to 6 credits of self-study per reporting period.


CPD Jurisdictions

British Columbia (CPD-BC):  PLI’s on-demand web programs are not eligible for CPD-BC credit unless viewed with at least one other attorney or an articled student. In this case, the credit must be recorded as a “study group.”

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Quebec (CPD-QC):  PLI’s on-demand web programs can fulfill Quebec’s CPD requirements.

Hong Kong (CPD-HK):  PLI’s on-demand web programs are not approved for CPD-HK credit.

United Kingdom (CPD-UK):  PLI’s on-demand web programs can fulfill the United Kingdom’s CPD requirements.

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


Other Credit Types

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IRS Continuing Education (IRS-CE):  PLI’s on-demand web programs 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).

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HR Recertification (HRCI):  PLI’s on-demand web programs may fulfill HR credit requirements.

SHRM Recertification (SHRM):  PLI’s on-demand web programs qualify as "self-paced" credit. SHRM professionals are limited to 30 credits of self-paced programs per recertification period.

Compliance Certification Board (CCB):  PLI’s on-demand web programs qualify as “self-study” credit. Candidates are limited to 10 self-study credits per 12-month period, and certification holders are limited to 20 self-study credits per 2-year renewal period.

Certified Anti-Money Laundering Specialists Certification (CAMS):  PLI’s on-demand web programs are not approved for CAMS credit.

New York State Social Worker Continuing Education (SW CPE):  PLI’s on-demand web programs are not approved for SW CPE credit.

American Bankers Association Professional Certification (ABA):  PLI’s on-demand web programs may fulfill ABA credit requirements.

 

Related Items

Live Programs  Live Programs

IP Issues in Business Transactions 2018 (San Francisco, CA) Feb. 8 - 9, 2018
IP Issues in Business Transactions 2018 (New York, NY) Jan. 8 - 9, 2018

Handbook  Course Handbook Archive

IP Issues in Business Transactions 2018  
IP Issues in Business Transactions 2017 Steven I Weisburd, Arent Fox LLP
Eric A Prager, K&L Gates LLP
Karen N Ballack, Weil, Gotshal & Manges LLP
Lothar Determann, Baker & McKenzie LLP
 
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