International Patent Licensing: Key Considerations

Navigating Tax Issues, Government Approvals, Export Control, Differences in IP Rights, and Special Termination Situations

Note: CPE credit is not offered on this program

A live 90-minute premium CLE video webinar with interactive Q&A


Tuesday, January 11, 2022

1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, December 17, 2021

or call 1-800-926-7926

This CLE course will guide patent counsel on cross-border patent licensing agreements. The panel will focus on issues impacted by the involvement of international parties in the agreement, including payment and tax issues, choice-of-law, dispute resolution, government approvals, and export control laws. The panel will offer best practices for structuring the cross-border deal to avoid litigation, allocate risk, and maximize patent value.

Description

While there are many similarities in patent licensing between U.S. parties and between a U.S. and foreign party, some key considerations should be kept in mind when structuring a cross-border patent or technology license.

Often, the licensor will want payments made in its country and currency. But in an international license this can raise many questions about the timing and rate of currency conversion as well as potential withholding taxes that may be applied on payments leaving the licensee’s country. Failure to address these issues up front can result in major disputes in the future if the licensor receives less than it expects due to such issues.

In addition, while all licenses often include provisions for governing law and dispute resolution, reaching agreement on these provisions in a cross-border license often raises different challenges. Unfamiliarity with foreign law and/or foreign courts often lead a party to reject the other party’s preferred forum. But choosing a neutral forum in a cross-border transaction can create its own difficulties.

Other vital considerations include, but are not limited to, government approval provisions, export control, differences in IP rights, applicable language, and special termination situations for international deals. By understanding the essential elements to include--and the common pitfalls--in cross-border patent licensing agreements, counsel for patent owners and licensees can prepare to effectively structure and negotiate the contracts in their clients' best interests.

Listen as our authoritative panel of patent attorneys examines cross-border patent licensing agreements, focusing on issues impacted by the international parties involved in the agreement. The panel will offer best practices for structuring the cross-border agreement to avoid litigation, allocate risk, and maximize patent value.

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Outline

  1. Key considerations and best practices in cross-border patent licensing agreements
    1. Cross-border payment issues
      1. Payment in different currencies
      2. Withholding taxes on payments leaving the country
    2. International choice of law and dispute resolution
      1. Governing law provisions
      2. Forum selection clauses and dispute resolution
    3. Government approval
      1. Government review and consent provisions
      2. Export control
    4. Other considerations
      1. Differences in IP rights
      2. Applicable language
      3. Special termination situations for international deals
      4. Other issues

Benefits

The panel will review these and other key issues:

  • What are the key contract terms to include in cross-border patent licensing agreements?
  • What are the pitfalls to avoid?
  • How to draft provisions to avoid or minimize litigation

Faculty

Del Monaco, Anthony
Anthony D. Del Monaco

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Del Monaco focuses his practice on patent litigation. His experience ranges from consulting with clients regarding...  |  Read More

Kacedon, D. Brian
D. Brian Kacedon

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across...  |  Read More

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Early Discount (through 12/17/21)

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Early Discount (through 12/17/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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