• videocam On-Demand Webinar
  • card_travel Patent
  • schedule 90 minutes

Allocating Patent Infringement Risk in Contracts: Structuring Warranties, Limitations of Liability, Indemnities

About the Course

Introduction

This CLE course will prepare counsel to patent owners, licensees, and licensors to protect their interests by allocating infringement risks during negotiations of warranties, limitation of liability, and indemnification provisions in patent contracts. The panel will offer best practices for negotiating and structuring provisions to allocate risk.

Description

In many agreements, the parties use or license the other party's intellectual property, or one party uses or licenses its IP for the other party's benefit. However, such use comes with some risks, including infringement claims and disputes over ownership. To manage the potential risks, counsel must include critical contract provisions to shift and mitigate this risk.

Several contract clauses can manage and shift IP risk. However, the interplay between critical provisions, such as the warranty, limitation of liability, and indemnification clauses, often are points of contention in contract negotiations.

Listen as our authoritative panel of patent attorneys examines the interplay of the warranty, limitation of liability, and indemnification clauses in contracts involving patents. The panel will highlight case law in which courts have interpreted the issues presented and will provide best practices to protect clients' interests.

Presented By

William Giltinan
Shareholder
Carlton Fields Jorden Burt LLP

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.

Eleanor M. Yost
Shareholder
Carlton Fields, P.A.

Ms. Yost is trusted by some of the most recognizable brands in the world to protect and enforce patent, trademark, copyright, and domain name portfolios. For more than two decades, she has litigated high-stakes intellectual property disputes in federal courts across the country, the U.S. International Trade Commission (ITC), and the U.S. Patent and Trademark Office (USPTO). Widely regarded as a thought leader on post-grant proceedings before the Patent Trial and Appeal Board (PTAB), Ms. Yost has represented clients in dozens of inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) proceedings. She has been named one of the “Top 50 Women in PTAB Trials” and was selected to be a founding member of the board of directors for the PTAB Bar Association, the leading national bar association for PTAB practitioners, judges, and other stakeholders.

Credit Information
  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Thursday, May 21, 2020

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. Contract clauses to manage IP risk
    1. Warranties
    2. Limitation of liability
    3. Indemnification
  2. Interplay between risk management clauses
  3. Court interpretation
  4. Best practices for shifting IP risk

The panel will review these and other noteworthy issues:

  • What should patent counsel consider when structuring warranties and limitation of liability provisions?
  • What is the interplay among indemnities, limitations of liability, and warranties?
  • What approaches should counsel use to protect a client's interests when negotiating indemnification provisions?