Crafting Effective Contracts to Avoid Litigation, Allocate Risk and Maximize Patent Value

A live 90-minute CLE webinar/teleconference with interactive Q&A
Sponsored by the Legal Publishing Group of Strafford Publications
Wednesday, December 21, 2011 ~ 1:00pm-2:30pm EST
Price: $297

Please note: You will be taken to the Strafford website to complete your order.

This CLE webinar will prepare IP counsel to craft effective patent licenses by reviewing key clauses and licensing in joint development projects. The panel will outline best practices for structuring the agreement to avoid litigation, allocate risk and maximize patent value.

Description

To maximize the value of its patents, companies use licensing to generate additional revenue. Non-patent owners look to licensing to improve their products by using existing technologies.

Licensing agreements should include key provisions such as indemnification, limitations on liability, sublicensing rights and payment structure. The agreements must clearly identify the technology that is being licensed and define the scope of the license — with an eye toward avoiding litigation.

By understanding the critical elements to include—and the common pitfalls—in patent licensing agreements, counsel for patent owners and for licensees can prepare to effectively craft and negotiate the agreement in their clients’ best interests.

Listen as our authoritative panel of patent attorneys examines patent licensing agreements, including standard clauses and variations to those clauses, sub-licensing rights, and licensing in joint development projects. The panel will offer best practices for structuring the agreement to avoid litigation, allocate risk and maximize patent value.

Outline

• Patent licensing agreements — standard clauses
  1. Defining scope of the license
  2. Representations and warranties
  3. Risk allocation
  4. Limitations on liability
  5. Indemnification
  6. Sublicensing rights
• Licenses in joint development projects
  1. Ownership and rights to improvements
  2. Patent pools and patent misuse
• Best practices for structuring licensing agreements

Benefits

The panel will review these and other key questions:

• What are the key contract terms to include in patent licensing agreements?
• What steps should be taken when crafting a licensing agreement in the context of a joint development project?
• What factors must be considered to structure a patent license to avoid or minimize litigation?

Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Peter J. Toren, Attorney
Shulman Rogers Gandal Pordy & Ecker, P.A., Potomac, Md.
He is an intellectual property litigator who has first-chaired patent and trademark trials and dozens of Markman, preliminary injunction and summary judgment hearings in federal courts . He has successfully litigated patent matters involving complex legal and factual matters concerning technologies, including computer software and hardware, LEDs, bio-technology, semiconductors and business methods.

Carey C. Jordan, Partner
McDermott Will & Emery, Houston
She focuses on patent prosecution, transactions and strategic portfolio management in the chemical, energy and alternative energy sectors. She develops IP portfolios for start-up and established companies, including formulating patent procurement strategies; obtaining domestic and foreign patents; handling prosecution procedures, and negotiating technology license and acquisition agreements.

Register Today!
Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.

Continuing Legal Education
Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.

Please note: You will be taken to the
Strafford website to complete your order.