About the Course
Introduction
This CLE course will prepare IP counsel to craft patent licenses by reviewing key clauses and licensing in joint development projects. The panel will outline best practices for structuring the agreement to avoid litigation, allocate risk, and maximize patent value.
Description
Companies are turning to their patent portfolios to increase their value through monetization or other strategic initiatives. A successful licensing program can significantly raise a company's valuation, but the licensing and enforcement environment has become more challenging. Companies use licenses with direct competitors and companies in related industries to generate additional revenue and to take full advantage of the value of their patents.
Licensing agreements should include provisions such as payment structure, sublicensing rights, indemnification, and limitations on liability to avoid litigation. By understanding the essential elements--and the common pitfalls--in patent licensing agreements, counsel for patent owners and licensees can prepare to effectively structure and negotiate contracts in their clients' best interests.
Listen as our authoritative panel of patent attorneys examines patent licensing agreements, including standard clauses and variations to those clauses, sublicensing rights, and licensing in joint development projects. The panel will offer best practices for structuring the agreement to avoid litigation, allocate risk, and maximize patent value.
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. Toren represents clients in patent litigation involving a variety of technologies including computer software and hardware, light emitting diodes, biotechnology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. He has successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act. In addition to intellectual property litigation, Mr. Toren has experience in computer law, including cybersecurity. He is a former federal prosecutor with the Computer Crime and Intellectual Property Section of the Criminal Division of the United States Department of Justice where he worked for over eight years and also served as Acting Deputy Chief.
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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, October 25, 2022
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Patent licensing agreements: key provisions
- Definitions
- Scope
- Sublicensing rights
- Payment structure
- Improvements
- Patent prosecution
- Term
- Indemnification
- Limitations on liability
- Representations and warranties
- Bankruptcy
- Licenses in joint development projects
- Best practices for structuring licensing agreements
The panel will review these and other key issues:
- What are the key contract terms to include in patent licensing agreements?
- What are the pitfalls?
- What are the lessons from recent court decisions?
- What are the factors to avoid or minimize litigation?
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