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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, May 21, 2020

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will prepare counsel to patent owners, licensees, and licensors to protect their interests by allocating infringement risks during negotiations of warranties, limitation of liability, and indemnification provisions in patent contracts. The panel will offer best practices for negotiating and structuring provisions to allocate risk.

Faculty

Eleanor M. Yost
Shareholder
Carlton Fields Jorden Burt LLP

Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals, opinions, licensing and transactions. She also litigates high-stakes intellectual property disputes in state and federal courts, the U.S. International Trade Commission (ITC) and the USPTO prosecution. Ms. Yost is the lead author of PTAB Post Grant Proceedings: A Tactical Guide for Practitioners and serves on the Board of Directors of the PTAB Bar Association.

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William Giltinan
Shareholder
Carlton Fields Jorden Burt LLP

Mr. Giltinan is the intellectual property and technology practice group leader. He is a licensed patent attorney whose practice includes patent, trademark, and copyright litigation, prosecution, and transactional matters. While Mr. Giltinan works with clients in a variety of industries, his practice tends to focus on assisting technology companies in their efforts to protect, monetize, and defend their intellectual property assets. He also serves on the firm’s privacy and cybersecurity task force and assists clients in matters involving privacy and data breach issues.

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Description

In many agreements, the parties use or license the other party's intellectual property, or one party uses or licenses its IP for the other party's benefit. However, such use comes with some risks, including infringement claims and disputes over ownership. To manage the potential risks, counsel must include critical contract provisions to shift and mitigate this risk.

Several contract clauses can manage and shift IP risk. However, the interplay between critical provisions, such as the warranty, limitation of liability, and indemnification clauses, often are points of contention in contract negotiations.

Listen as our authoritative panel of patent attorneys examines the interplay of the warranty, limitation of liability, and indemnification clauses in contracts involving patents. The panel will highlight case law in which courts have interpreted the issues presented and will provide best practices to protect clients' interests.

Outline

  1. Contract clauses to manage IP risk
    1. Warranties
    2. Limitation of liability
    3. Indemnification
  2. Interplay between risk management clauses
  3. Court interpretation
  4. Best practices for shifting IP risk

Benefits

The panel will review these and other noteworthy issues:

  • What should patent counsel consider when structuring warranties and limitation of liability provisions?
  • What is the interplay among indemnities, limitations of liability, and warranties?
  • What approaches should counsel use to protect a client's interests when negotiating indemnification provisions?