Patent Acquisition Agreements: Considerations When Acquiring Patents, Negotiating and Structuring Key Provisions

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

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Tuesday, July 19, 2022

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE webinar will guide patent counsel on patent acquisition agreements and what factors counsel should consider when negotiating and drafting these agreements. The panel will address the agreement's key provisions and offer best practices for negotiating and structuring these agreements.

Description

When acquiring patents from outside the company, the buyer should consider a number of important factors. First, all record owners of the IP must be parties to the patent acquisition agreement. Often patents are assigned, and the buyer wants to ensure that the assignee is obligated to transfer ownership of the patent. If the buyer is granting back a licensee to the seller, the parties should consider including that in the agreement.

Several important provisions should be in the agreement, including transfer provisions, reps and warranties, indemnification, and dispute resolution provisions. For example, the parties may want to include that the use of the patent does not violate any third-party rights, and there have been no third-party infringement claims. Further, the parties may want to include the term and termination of any patent and know-how licenses among the transfer provisions.

Patent buyers should also consider the Supreme Court's ruling in Hologic (2021), which may warrant some additional contractual protections. Those acquiring a patent should also include representations and warranties to ensure that all information relevant to validity is disclosed.

Listen as our authoritative panel of patent attorneys examines patent acquisition agreements and what factors counsel should consider when negotiating and drafting these agreements. The panel will offer best practices for negotiating and structuring these agreements.

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Outline

  1. Key considerations when acquiring patents
    1. Defects
    2. Enforceability of the patent
    3. Licensing agreements in place and any potential patent misuse issues
    4. Validity
    5. Freedom to operate
  2. Structuring the acquisition agreement
    1. Definitions and identification of the IP assets
    2. Transfer provisions
    3. Reps and warranties
    4. Indemnification
    5. Dispute resolution provisions
  3. Best practices

Benefits

The panel will review these and other noteworthy issues:

  • What should patent counsel consider when structuring patent acquisition agreements?
  • What should you do if your counterparty refuses to indemnify your client?
  • When negotiating an acquisition agreement, what approaches should counsel use to protect a client's interests?

Faculty

Ewing, Gregory
Gregory L. Ewing

Partner
Potomac Law Group

Mr. Ewing focuses his practice on dispute resolution and advising clients around cyber security, privacy, blockchain,...  |  Read More

Lennon, Michael
Michael J. Lennon

Partner
Potomac Law Group

Mr. Lennon is a Partner in the firm’s Litigation, Patent, Intellectual Property, and Technology and IP...  |  Read More

Toren, Peter
Peter J. Toren

Attorney
Peter J. Toren Attorney At Law

Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software...  |  Read More

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