About the Course
Introduction
This CLE course will guide patent counsel on the most problematic areas in patent licensing. The panel will dive into the scope, indemnification, royalty terms, sublicensing, territorial and use restrictions, and more. They will offer best practices for navigating these licensing pitfalls.
Description
Patent licenses are a primary tool for monetizing patents. When well-drafted, a license agreement can provide substantial income for the licensor and a business opportunity for the licensee. However, if a license agreement is poorly drafted, it can lead to litigation and cost millions of dollars.
For example, a poorly written license may include the following problem areas. Does the license have the proper scope including future patents and/or technology? Does the indemnification address potential risks for the licensor and the licensee? Is sublicensing permitted? If so, what rights may be sublicensed? Are the royalty terms clear and do they adequately address future products?
By understanding the critical elements and the potential pitfalls in patent licensing agreements, counsel for patent owners and licensees can effectively draft and negotiate the agreement in their clients' best interests.
Listen as our authoritative panel of IP attorneys examines several of the most problematic areas in patent licensing. The panel will do a deep dive into scope, indemnification, royalty payments, sublicensing, territorial and use restrictions, and more. They will offer best practices for navigating these licensing pitfalls.
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. Swanson helps clients secure, protect, enforce, and defend intellectual property rights, including patents, trade secrets, and trademarks. She primarily focuses her practice on prosecution, litigation, and due diligence matters in the biotechnology and chemistry arts.
Recent domestic and international prosecution matters have involved technologies such as cancer vaccines, treatments involving delivery of personalized medicine, nucleic acid sequences, proteins, enzymes, biomarkers, chemical and biological assays, monoclonal antibodies, chimeric antigen receptors (CARs), designer receptors exclusively activated by designer drugs (DREADDs), cell lines, DNA cloning and amplification techniques, genetic vectors, medical treatments, and pharmaceutical compositions. While fascinated by the legal and scientific aspects of her role, she also enjoys having the opportunity to understand the business side of her clients’ companies so she can effectively advise on portfolio management strategies.
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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
Tuesday, April 9, 2024
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Scope of licensed patents
- Indemnification
- Royalty terms
- License of improvements and/or new technologies
- Sublicensing
- Territorial and use restrictions
- Assignment of license
- Best practices for navigating licensing pitfalls
The panel will review these and other key issues:
- Which licensing provisions present the most challenging pitfalls?
- What are the lessons from recent court decisions?
- What steps should counsel take to minimize the risk of encountering licensing pitfalls?
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