Structuring Patent Indemnification Provisions
Allocating Infringement Risk While Accounting for Changes to PTAB Estoppel and Statutory Bar Requirements
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Tuesday, June 20, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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This CLE course will prepare counsel to IP owners, licensees, and licensors to protect their interests by allocating patent infringement risks during the negotiation of indemnification provisions in a patent license or vendor contract. The panel will offer best practices for negotiating and structuring patent indemnification provisions to allocate risk.
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.
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.
Indemnification provisions are often overlooked but are a critical part of any technology license or similar agreement. Drafting and negotiating indemnification provisions is crucial to protecting business interests and minimizing litigation costs.
Counsel to all parties must carefully consider the scope of liability covered by the indemnification obligation, liability triggers, and indemnification of third parties when negotiating the contract terms.
Listen as our authoritative panel of patent attorneys examines structuring patent indemnification provisions and what factors counsel should account for when negotiating and drafting indemnification clauses. The panel will offer best practices for negotiating and structuring patent indemnification provisions to allocate risk.
- Agreements in which such indemnification provisions are likely to appear
- Common structures for indemnification provisions
- Allocating infringement risk and distinguishing indemnification of patent claims from indemnification of other IP claims
- Best practices for negotiating and structuring patent indemnification provisions
The panel will review these and other noteworthy issues:
- What should patent counsel consider when structuring indemnification provisions?
- What carve-outs are market?
- What should you do if your counterparty refuses to indemnify your client?
- What approaches should counsel use to protect a client's interests when negotiating an indemnification provision?
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