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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, October 6, 2022

  • 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 counsel on transferring patent ownership. The panel will address the impact of encumbrances such as preexisting licenses on patent transfers as well as how the retention of certain rights by the former owner can affect the new patent owners' rights. The panel will also discuss how these issues impact enforcement of the patent. The panel will discuss how the courts are treating these issues and offer guidance for transferring patent ownership.

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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Violetta A. Kokolus
Partner
Ropes & Gray

Ms. Kokolus advises on complex technology and intellectual property transactions, as well as on critical IP and privacy/cybersecurity aspects of M&A transactions across various industries. She has been involved in countless M&A transactions in her career, leading negotiations and resolving complex IP issues that arise during diligence. Additionally, Ms. Kokolus has extensive experience with strategic IP licensing and commercial transactions, such as IP acquisitions, licensing matters, joint ventures, and research and development collaborations. She has also guided clients on legal issues related to data strategies and monetization, along with the integration of artificial intelligence.

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Joseph R. Robinson
Partner
Troutman Pepper Locke LLP

Mr. Robinson has more than 30 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology and medical device fields. His practice encompasses litigation, including Hatch-Waxman and biosimilar litigation; inter partes proceedings; licensing; counseling; due diligence; patent and trademark prosecution and strategy; and mergers and acquisitions. Mr. Robinson represents clients in a variety of patent and trademark disputes in jurisdictions throughout the U.S., and as appellate counsel before the Federal Circuit. He is particularly known for his experience handling complex Hatch-Waxman litigation, biosimilar matters and Bayh–Dole Act issues. Mr. Robinson is an advisor on life sciences to the White House Office of American Innovation and is a reviewer for the peer-reviewed Nature Biotechnology.

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Description

Transferring ownership of a patent is not always a simple matter. Existing encumbrances on the patent can impact the rights and obligations of both the assignor and the assignee. In particular, preexisting licenses can present difficult questions for both the former and new owner of the patents. For example, will the license transfer with the transfer of ownership of the patent? If not, will any of the rights and obligations under that license run with the patent regardless?

In addition, it is often the case that the prior owner will want to retain certain rights under the patent even after assignment. The former owner may want the right to continue practicing the patent or grant licenses to affiliates or customers. The former owner may also want to retain some say in future litigation or assignment of the patent. The transfer must consider, however, the impact of those restrictions on the new owner's ability to enforce the patent. The Federal Circuit recently addressed an assignee's ability to enforce patents without joinder of the former owner where certain restrictions were placed on the new owner. The court concluded it was necessary to join the original patent owner for the new owner to have standing to sue. Lone Star Silicon Innovations L.L.C. v. United Microelectronics Corp. (Fed. Cir. 2019). Therefore, when transferring patent ownership, patent counsel must understand these issues to ensure the new owner can enforce the patent and the restrictions on the patent rights are clear.

Listen as our authoritative panel of patent attorneys examines transfers of patent ownership. The panel will address the impact of existing encumbrances such as preexisting licenses on patent transfers as well as the rights and encumbrances that run with the patent generally. The panel will also address how the terms of the assignment agreement may impact the new owner's right to enforce the patent. The panel will discuss how the courts are treating these issues and offer guidance for transferring patent ownership.

Outline

  1. Transfer of patent ownership generally
  2. Impact of preexisting rights and encumbrances
    1. Rights that run with the patent
    2. Encumbrances that run with the patent
  3. Impact of preexisting licenses
    1. Effect of assignment of the license agreement to new owner
    2. Effect of retention of the license agreement by prior owner
  4. The assignment agreement and enforcement of the patent
    1. Effect of preexisting licenses
  5. Recent decisions
  6. Best practices for transferring patent ownership

Benefits

The panel will review these and other key issues:

  • How do preexisting encumbrances such as prior licenses impact the transfer of a patent?
  • How can preexisting licenses or restrictions in an assignment agreement affect a new owner's ability to enforce the patent?
  • What hurdles must counsel watch for when transferring patent ownership?