Licensing Trade Secrets: Risks and Benefits, License and Payment Terms, Boilerplate Language
Avoiding Litigation, Allocating Risk, and Maximizing Trade Secret Value
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will prepare IP counsel to craft trade secret licenses. The panel will discuss the risks and benefits and review key clauses. The panel will outline best practices for structuring the agreement to avoid litigation, allocate risk, and maximize value.
Outline
- Risks and benefits
- License terms
- Payment terms
- Boilerplate language
- Best practices
Benefits
The panel will review these and other key issues:
- How can counsel prevent the loss of trade secrets?
- What are the key contract terms to include in a trade secret license?
- What pitfalls should be avoided?
- What factors must be considered to avoid or minimize litigation?
- What lessons can be learned from recent court decisions?
Faculty
John M. Augustyn
Shareholder
Leydig Voit & Mayer
John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client... | Read More
John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client counseling, and prosecution. Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that IP and business issues require creative and cost effective legal solutions. He has authored several articles and chapters for books, has appeared on multiple television and radio programs, has taught law school classes, and has provided over 30 CLE programs to thousands of corporate and outside counsel. His legal success has been recognized by selection to Best Lawyers, Super Lawyers, IAM Patent 1000, Top 100 High Stakes Litigators, Fellow to Litigation Counsel of America, and other honors. Please click on his photo above for more information.
Litigation
John has been lead counsel in patent and trade secret litigations throughout the country at the trial and appellate levels. He also has been lead counsel in Post Grant proceedings at the USPTO and coordinated post grant proceedings in other countries. In addition, he has litigated cases at the International Trade Commission. His litigation experience has involved several areas, including electronics, magnetics, sensors, control systems, medical devices, automotive, and consumer products.
Opinions
John counsels and renders opinions on patent infringement and invalidity including major product launches in competitive patent landscapes. These opinions often involve large patent families with multiple US patents and with existing litigations and patent office proceedings throughout the world.
Patent Prosecution
He has extensive experience in formulating patent strategies and managing patent portfolios. John manages the US and non-US patent prosecution for several international corporations. He has prepared or supervised the preparation of over 1000 US original patent applications and oversaw the prosecution of over 3000 non-US patent applications.
Due Diligence
John performs due diligence for mergers and acquisitions. The due diligence involves an analysis of the patents, trademarks, trade secrets, licenses, agreements, products, services, manufacturing processes, software, marketing, and standards by standard setting organizations.
IP Agreements
He successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee, including patent licenses, technology licenses, trade secret agreements, joint venture agreements, trademark agreements, and research and development agreements.
Trade Secrets
John advises clients on trade secret matters including: litigating trade secret cases, negotiating trade secret agreements, advising clients on the best techniques for protecting their trade secrets, and helping clients decide whether to use trade secret versus patent protection.
Justin Krieger
Partner
Kilpatrick Townsend & Stockton
Mr. Krieger is a first chair inter partes review and post-grant review litigator with a tremendously successful track... | Read More
Mr. Krieger is a first chair inter partes review and post-grant review litigator with a tremendously successful track record for challenging third-party patents as well as defending against patent challenges brought before the PTAB. He also serves as an adjunct Professor of Law at the University of Denver Sturm College of Law where he teaches a course on PTAB studies. As a registered patent attorney, Mr. Krieger also focuses on client counseling, district court litigation, and patent prosecution. His technical focus includes chemistry, chemical engineering, biotechnology, medical devices, metallurgy, nanotechnology, mechanical engineering and consumer products. He has significant experience managing large domestic and international patent portfolios in these industries. Mr. Krieger lectures and publishes frequently on various intellectual property topics.
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