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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, February 22, 2024

  • 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 webinar will guide IP counsel on in-licensing and out-licensing in the pharmaceutical industry. The panel will discuss the advantages and disadvantages of both as well as the key considerations when weighing whether to use either type. The panel will also address the evaluation of the product and licensing partner and the due diligence process. The panel will offer best practices for structuring the agreement.

Faculty

Thomas L. Irving
Partner
Marbury Law Group

Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

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Michelle E. O'Brien
Partner, Head of Life Sciences
Marbury Law Group

Ms. O’Brien has more than 20 years of experience representing domestic and foreign clients of all sizes in patent procurement, litigation, and client counseling, with a particular emphasis on chemical, biochemical, and pharmaceutical technologies. Exemplary areas of her technical expertise include polymer chemistry; ceramics; glass; food chemistry; cosmetics; paper products; adhesives; and pharmaceutical products, including new chemical entities and formulations and novel solid forms, including polymorphs, cocrystals, and amorphous forms of compounds.

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Eyal H. Barash
Member
Barash Law, LLC

Mr. Barash specializes in legal services for emerging knowledge-based companies with a special emphasis in life science companies. He has a particular focus in counseling companies in solid form patent applications including cocrystals, polymorphs, amorphous dispersions, and salts including prosecution, licensing, and litigation strategies.

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Description

Pharmaceutical companies often explore partnership opportunities. A company may seek to acquire the rights to another organization's product or IP to expand its portfolio or enter new markets (in-licensing) Similarly, pharma companies may grant another company the right to use its technology or IP (out-licensing).

In both instances, it is critical for both the licensor and licensee to evaluate the product involved as well as the partner organization. Due diligence should be conducted and careful consideration should be given to the potential benefits and risks, from royalties to regulatory issues to the impact on product development with in-licensing and out-licensing. Also, the due diligence should look into inventorship, ownership, patentability/validity and freedom to operate.

Listen as our authoritative panel of patent attorneys examines the advantages and disadvantages of in-licensing and out-licensing and the key considerations when weighing whether to use either type from both the licensee's and licensor's perspective. The panel will also address the evaluation and due diligence of the product and licensing partner as well as term sheet and agreement negotiation and structuring.

Outline

  1. Advantages of in-licensing
  2. Advantages of out-licensing
  3. Key considerations
    1. Licensor
    2. Licensee
  4. Product and licensing partners
    1. Evaluation
    2. Due diligence
  5. Term sheets
  6. Structuring licensing agreements

Benefits

The panel will review these and other key issues:

  • What key considerations should pharma organizations and counsel weigh when determining whether to in- or out-license technology or products?
  • What steps can licensee counsel take to effectively build protections into the license itself?
  • What steps should licensor counsel take to mitigate the risks of licensing its technology?