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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

    Tuesday, January 23, 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 course will guide patent counsel on cross-border patent licensing agreements. The panel will focus on issues impacted by the involvement of international parties in the agreement, including payment and tax issues, choice of law, dispute resolution, government approvals, and export control laws. The panel will offer best practices for structuring the cross-border deal to avoid litigation, allocate risk, and maximize patent value.

Faculty

D. Brian Kacedon
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional. He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience. Mr. Kacedon’s practice focuses on patent and technology licensing and litigation. In his transactional practice, he assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. His experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements. Mr. Kacedon is a frequent presenter at legal and industry workshops and conferences and has served as adjunct professor teaching licensing at the George Washington University Law School.

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Anthony D. Del Monaco
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Del Monaco focuses his practice on patent litigation. His experience ranges from consulting with clients regarding litigation strategy and preparation of all aspects of client’s complaint; conducting depositions of fact, Rule 30(b)(6), and experts on technical and non-technical issues; preparing fact and expert witnesses for direct- and cross-examination at trial; and performing direct- and cross-examinations of witnesses at trial. He also advises on patent matters, including opinions of counsel. He has experience working with a broad range of technologies, including mechanical, electrical, business methods, and medical devices.

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Description

While there are many similarities in patent licensing between U.S. parties and between a U.S. and foreign party, some key considerations should be kept in mind when structuring a cross-border patent or technology license.

Often, the licensor will want payments made in its country and currency. But in an international license this can raise many questions about the timing and rate of currency conversion as well as potential withholding taxes that may be applied on payments leaving the licensee's country. Failure to address these issues up front can result in major disputes in the future if the licensor receives less than it expects due to such issues.

In addition, while all licenses often include provisions for governing law and dispute resolution, reaching agreement on these provisions in a cross-border license often raises different challenges. Unfamiliarity with foreign law and/or foreign courts often leads a party to reject the other party's preferred forum. But choosing a neutral forum in a cross-border transaction can create its own difficulties.

Other vital considerations include, but are not limited to, government approval provisions, export control, differences in IP rights, applicable language, and special termination situations for international deals. By understanding the essential elements to include--and the common pitfalls--in cross-border patent licensing agreements, counsel for patent owners and licensees can prepare to effectively structure and negotiate the contracts in their clients' best interests.

Listen as our authoritative panel of patent attorneys examines cross-border patent licensing agreements, focusing on issues impacted by the international parties involved in the agreement. The panel will offer best practices for structuring the cross-border agreement to avoid litigation, allocate risk, and maximize patent value.

Outline

  1. Key considerations and best practices in cross-border patent licensing agreements
    1. Cross-border payment issues
      1. Payment in different currencies
      2. Withholding taxes on payments leaving the country
    2. International choice of law and dispute resolution
      1. Governing law provisions
      2. Forum selection clauses and dispute resolution
    3. Government approval
      1. Government review and consent provisions
      2. Export control
    4. Other considerations
      1. Differences in IP rights
      2. Applicable language
      3. Special termination situations for international deals
      4. Other issues

Benefits

The panel will review these and other key issues:

  • What are the key contract terms to include in cross-border patent licensing agreements?
  • What are the pitfalls to avoid?
  • How to draft provisions to avoid or minimize litigation