About the Course
Introduction
This CLE webinar will guide IP counsel on conducting license compliance reviews and audits. The panel will examine the underreporting of royalties, compliance with other provisions of the license, language to include in a license, and lessons from recent court decisions. The panel will also discuss special considerations for patent, trademark, trade secret, and copyright licenses and will address compliance issues after termination of license.
Description
As companies manage numerous licenses for patents, trademarks, copyrights, and trade secrets, licensees and licensors must remain compliant with the terms of the license. Without a regular and effective review program in place, compliance by both a licensee and a licensor may fall by the wayside, which may result in the loss of millions of dollars and significant IP rights.
Licensors are losing money because over 50 percent of licensees underreport royalties by six percent or more, and 20 percent of licensees underreport royalties by 100 percent or more per a recent survey. Conversely, licensees may be paying more royalties than required under the license. These situations occur for various reasons that a compliance review and audit can identify. During the compliance review and audit, companies will confirm the proper payment of royalties and compliance with other terms of the license.
Listen as our authoritative panel of IP attorneys addresses why it is important to conduct compliance reviews and audits as well as the review and audit process. The panel will examine the underreporting of royalties, language to include in a license, and what can be learned from recent court decisions. The panel will also discuss special considerations for each type of license: patent, trademark, trade secret, and copyright licenses. In addition, the webinar will address compliance issues after termination of license.
Presented By
Mr. Augustyn represents clients in high stakes intellectual property litigation, licenses, agreements, mergers & acquisitions, client counseling, and prosecution. Leveraging his prior experience in management and as an engineer at Fortune 100 companies, he understands that IP and business issues require creative and cost-effective legal solutions. Mr. Augustyn has been an international speaker at over 60 programs to thousands of corporate and outside counsel. Also, he has been an instructor and advisor for over 15 years total at Loyola Law School and Northwestern Law School. Mr. Augustyn has been selected for several honors including Best Lawyers, Super Lawyers, Top 50 Lawyers in America, IAM Patent 1000, and Fellow to Litigation Counsel of America.
Ms. Schaefer is a trademark attorney with experience in trademark litigation and prosecution, as well as policing and enforcement. She has served as counsel for national and international clients in federal court litigations, where she has managed all aspects of discovery, including deposing fact and expert witnesses, drafting and filing a number of dispositive motions, as well as pretrial preparation. Further, Ms. Schaefer has worked closely with experts, including those with expertise in trademark surveys, damages, and pharmaceuticals. She also has significant experience in complex inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), including through trial. Ms. Schaefer has significant experience with ICANN proceedings relating to domain name disputes and takedown procedures before various social media websites.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Wednesday, December 14, 2022
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Why review and audit?
- Statistics on underreporting of royalties
- Reasons for underreporting
- Solutions for maintaining compliance
- Provisions to include in IP licenses
- Recent court decisions
- Review and audit process
- Confirm compliance with other license provisions
- Additional considerations for patent, trademark, copyright, and trade secret licenses
- Compliance after termination of license
The panel will review these and other highly relevant issues:
- How are licensors losing money and how are licensees paying more than required?
- What are the best practices for an effective IP license compliance review and audit program?
- What language should be included in each type of IP license to avoid compliance pitfalls?
