About the Course
Introduction
This CLE course will prepare IP counsel to craft trade secret licenses. The panel will discuss the risks and benefits and review key clauses. The panel will outline best practices for structuring the agreement to avoid litigation, allocate risk, and maximize value.
Description
The licensing of trade secrets can include pitfalls. Learn how a licensor continues to receive royalties 90 years after the trade secret became public. Moreover, a federal court has ruled that the payments should continue as long as the product is sold.
New technology often includes trade secrets. Companies may need to share the trade secrets with business partners, manufacturers, and others to realize the full economic value of the trade secrets. Licensing trade secrets allows the owners to leverage business resources and access markets that they would otherwise not have.
However, licensing trade secrets is not without its challenges, the chief of which is preserving secrecy during the negotiation, performance, and termination of the licensing agreement. Confidentiality is one of the license conditions, but without proper monitoring, there is a risk that the trade secret information will be disclosed to third parties.
Licensing agreements should include critical provisions such as confidentiality, payment structure, termination, indemnification, and limitations on liability. By understanding the essential elements and the common pitfalls, counsel for trade secret owners and licensees can effectively structure and negotiate the agreements in their clients' best interests.
Listen as our authoritative panel of IP attorneys examines trade secret licenses, discusses the risks and benefits, reviews key clauses, and provides best practices.
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.
Mr. Krieger is a first chair inter partes review and post-grant review litigator with an over 90% win rate in both challenging third-party patents and defending against patent challenges brought before the PTAB. He also serves as an adjunct Professor of Law at the University of Denver Sturm College of Law where he teaches a course on PTAB studies. As a registered patent attorney, Mr. Krieger also focuses on district court and ITC litigation, client counseling, and patent prosecution. His technical focus includes chemistry, chemical engineering, biotechnology, medical devices, metallurgy, nanotechnology, mechanical engineering and consumer products. Mr. Krieger lectures and publishes frequently on various IP topics.
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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
Thursday, February 29, 2024
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Risks and benefits
- License terms
- Payment terms
- Boilerplate language
- Best practices
The panel will review these and other key issues:
- How can counsel prevent the loss of trade secrets?
- What are the key contract terms to include in a trade secret license?
- What pitfalls should be avoided?
- What factors must be considered to avoid or minimize litigation?
- What lessons can be learned from recent court decisions?
