About the Course
Introduction
This CLE webinar will guide patent counsel on the termination of a patent license. The panel will address whether, when, and how to terminate a patent license and offer practice guidance to manage the associated risks.
Description
Termination of a patent license may seem straightforward if the license agreement clearly laid out the circumstances under which termination is permitted. However, things are not always as they seem at first blush. For example, what if the license is assigned to the licensor's competitor?
Also, what is the effect on the license if the licensee challenges the licensed patent's validity? And what role do forum selection clauses and “no challenge” clauses play in terminating such licenses? Furthermore, what are the options for the licensee if a licensor declares bankruptcy? Similarly, what are the options for the licensor if the licensee declares bankruptcy?
There are post-termination considerations that should be kept in mind. Some provisions may survive the agreement's termination. Many licenses prohibit the licensee from using the licensed IP after termination, giving the licensor a breach of contract claim in addition to an infringement claim. Further, if the license agreement involves the disclosure of know-how or other confidential information, termination of the agreement may require the return or destruction of the confidential information. The parties should also consider the effect of termination on the licensed products the licensee holds as well as sublicenses. In addition, the license agreement may require obligations with respect to patent prosecution and/or litigation and the effect of termination must be addressed.
Listen as our authoritative panel of patent attorneys examines terminating licenses of patent rights. The panel will address whether, when, and how to terminate a patent license and offer practice guidance to manage the associated risks.
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 leading patent strategist with more than 25 years of experience guiding clients through complicated intellectual property challenges. Known for his ability to distill scientifically intricate issues into clear, actionable strategies, Mr. Krieger is highly sought after for conducting freedom-to-operate (FTO) analyses in the chemistry, biochemistry, oil and gas, mechanical systems, and medical device fields. He is equally adept at evaluating patents for validity and conducting non-infringement assessments, helping clients navigate dense landscapes of competitor patents. In addition to client counseling, Mr. Krieger is also an active PTAB litigator, having represented both petitioners and patent owners in dozens of PTAB proceedings. His outstanding record has set him apart as one of the most effective PTAB advocates in the country. Mr. Krieger also handles district court and ITC litigation, and patent prosecution matters across a range of technical fields. He chairs the American Chemical Society (ACS) Committee on Intellectual Property and is Chair-Elect of the Colorado Section of ACS. Mr. Krieger teaches a course on PTAB litigation as an adjunct professor at the University of Denver Sturm College of Law and also lectures and publishes frequently on various intellectual property topics, including PTAB litigation, trade secrets, the America Invents Act, and the “on sale” bar to patentability.
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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, April 13, 2023
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Considerations before terminating
- Termination under the license terms
- Mutual termination or amendment
- Breach
- Invalidity challenge
- Bankruptcy
- Change of Control
- Expiration and renewal issues
- Notice
- Post-termination considerations
- Best practices
The panel will discuss these and other important issues:
- What are the key considerations for terminating a patent license?
- What considerations should licensors and licensees keep in mind regarding post-termination of a patent license?
- What are best practices for navigating the practical and legal issues for licensors and licensees when terminating a patent license?
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