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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, May 9, 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 provide guidance to counsel for drafting technology transfer and licensing agreements. The panel will discuss key clauses in the contracts and offer best practices for negotiating the agreements and avoiding common pitfalls.

Faculty

Andrew Wilson
Special Counsel
Baker Botts LLP

Mr. Wilson's practice focuses on high-tech patent litigation and transactions, with a particular emphasis on software. Clients rely on his experience with complex IP issues involving the relationship between open source and proprietary software, including in cloud-hosted products (SaaS), distributed software products, and machine-learning and artificial intelligence systems. Mr. Wilson frequently practices before U.S. Federal District Courts, the USPTO's Patent Trial and Appeal Board, and the ITC in patent litigation matters involving software-related inventions and other IP rights afforded to software. Mr. Wilson also participates in all phases of M&A transactions involving software, including diligence of third-party software licenses, conducting and interpreting code scan audits, and facilitating remediation and compliance efforts. Guided by his experience with over 75 M&A-related software audits, he quickly triages voluminous code scan reports to identify red-flag software licensing issues. He also regularly drafts and negotiates agreements involving related technologies.

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Luke K. Pedersen
Partner, Co-Chair IP Transactions Practice Group
Baker Botts LLP

Mr. Pedersen's practice includes all aspects of intellectual property law, with a particular emphasis on technology transfers, licensing, patent prosecution and litigation involving complex and emerging technologies. He regularly drafts and negotiates technology transfer agreements pertaining to ownership rights in and to intellectual property in the context of M&A transactions and licensing programs. Mr. Pedersen is a frequent lecturer on software related topics including the legal implications of cloud computing, software-as-a-service and open source software.

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Description

Companies increasingly rely on new and improved technology to remain competitive, drive operational efficiencies, and increase profits. Often businesses acquire rights in such technology from a third party via an agreement that governs the use of certain intellectual property rights that are embodied in or otherwise used by this technology, or that may be implicated through the use of this technology. While technology transfers present financial opportunities for both parties, they involve legal risk, such as the potential for IP infringement or the failure of related services to provide the expected value.

Strategically negotiated technology transfer and licensing agreements can help minimize the risks inherent in technology transfers. Counsel should include provisions that define the particular IP rights being licensed or sold, protection of any rights that the owner or licensor will retain, ownership of any jointly developed IP, rights to improvements, indemnification obligations, obligations to assert retained rights, limitations on liability, and other key clauses in the agreements to establish each party’s rights and obligations and minimize the potential for future disputes. To the extent that related services will be provided in connection with the technology transfer or license (e.g., maintenance services), counsel should include provisions that ensure that the expected quality of services is delivered.

By understanding the critical elements to include in agreements--and the common pitfalls--technology and business counsel can effectively draft and negotiate an agreement in their clients' best interests.

Listen as our authoritative panel examines technology transfer and licensing agreements, including standard clauses and common pitfalls. The panel will offer best practices for structuring the agreements to protect client interests.

Outline

  1. Key provisions in technology transfer and licensing agreements
  2. Potential pitfalls with technology transfer and licensing agreements
  3. Resolving common negotiation disputes
  4. Key considerations for tech transfers involving software and AI

Benefits

The panel will review these and other key issues:

  • What are the key provisions to include in technology transfer agreements?
  • What are the critical steps to minimize the risk of IP infringement with technology transfers?
  • What can be done to ensure that adequate rights are received and that any related services are performed in the expected manner?
  • What strategies can be used to resolve commonly disputed issues during the negotiation of technology transfer and licensing agreements?