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IP License Compliance Reviews and Audits: Assessing and Optimizing IP

How to Protect IP Rights, Double Royalty Income, or Pay No Royalties

Recording of a 90-minute premium CLE video webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Wednesday, December 14, 2022

Recorded event now available

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This CLE webinar will guide IP counsel on conducting license compliance reviews and audits. The panel will examine the underreporting of royalties, compliance with other provisions of the license, language to include in a license, and lessons from recent court decisions. The panel will also discuss special considerations for patent, trademark, trade secret, and copyright licenses and will address compliance issues after termination of license.

Description

As companies manage numerous licenses for patents, trademarks, copyrights, and trade secrets, licensees and licensors must remain compliant with the terms of the license. Without a regular and effective review program in place, compliance by both a licensee and a licensor may fall by the wayside, which may result in the loss of millions of dollars and significant IP rights.

Licensors are losing money because over 50 percent of licensees underreport royalties by six percent or more, and 20 percent of licensees underreport royalties by 100 percent or more per a recent survey. Conversely, licensees may be paying more royalties than required under the license. These situations occur for various reasons that a compliance review and audit can identify. During the compliance review and audit, companies will confirm the proper payment of royalties and compliance with other terms of the license.

Listen as our authoritative panel of IP attorneys addresses why it is important to conduct compliance reviews and audits as well as the review and audit process. The panel will examine the underreporting of royalties, language to include in a license, and what can be learned from recent court decisions. The panel will also discuss special considerations for each type of license: patent, trademark, trade secret, and copyright licenses. In addition, the webinar will address compliance issues after termination of license.

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Outline

  1. Why review and audit?
  2. Statistics on underreporting of royalties
  3. Reasons for underreporting
  4. Solutions for maintaining compliance
  5. Provisions to include in IP licenses
  6. Recent court decisions
  7. Review and audit process
  8. Confirm compliance with other license provisions
  9. Additional considerations for patent, trademark, copyright, and trade secret licenses
  10. Compliance after termination of license

Benefits

The panel will review these and other highly relevant issues:

  • How are licensors losing money and how are licensees paying more than required?
  • What are the best practices for an effective IP license compliance review and audit program?
  • What language should be included in each type of IP license to avoid compliance pitfalls?

Faculty

Augustyn, John
John M. Augustyn

Shareholder
Leydig Voit & Mayer

John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client...  |  Read More

Schaefer, Laura
Laura M. Schaefer

Attorney
Leydig Voit & Mayer

Ms. Schaefer is a trademark attorney with experience in trademark litigation and prosecution, as well as policing and...  |  Read More

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Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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