Patent Acquisition Agreements: Considerations When Acquiring Patents, Negotiating and Structuring Key Provisions
Recording of a 90-minute premium CLE video webinar with Q&A
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.
- Key considerations when acquiring patents
- Enforceability of the patent
- Licensing agreements in place and any potential patent misuse issues
- Freedom to operate
- Structuring the acquisition agreement
- Definitions and identification of the IP assets
- Transfer provisions
- Reps and warranties
- Dispute resolution provisions
- Best practices
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?
Gregory L. Ewing
Potomac Law Group
Mr. Ewing focuses his practice on dispute resolution and advising clients around cyber security, privacy, blockchain,... | Read More
Mr. Ewing focuses his practice on dispute resolution and advising clients around cyber security, privacy, blockchain, and other technology related issues. He has extensive experience in high-profile international and domestic arbitration and litigation matters advising all sizes of clients, from Fortune 100 businesses, to non-U.S. sovereigns, to small businesses and individuals. Mr. Ewing also brings a deep technical knowledge to his practice. He was a software developer and consultant before law school, which gives him the practical background to give clients the legal advice they need on all manners of technological issues.Close
Michael J. Lennon
Potomac Law Group
Mr. Lennon is a Partner in the firm’s Litigation, Patent, Intellectual Property, and Technology and IP... | Read More
Mr. Lennon is a Partner in the firm’s Litigation, Patent, Intellectual Property, and Technology and IP Transactions Practices, focusing on complex litigation, licensing and business transactions relating to intellectual property rights. Over his decades of practicing law, Mr. Lennon has represented and acted as an advisor to numerous multinational technology companies in industries ranging from medical devices to wind power systems. In transactional matters, Mr. Lennon acts as both legal counsel and as a strategic advisor to his clients, and he has negotiated numerous agreements relating to the acquisition, licensing and monetization of IP. He has appeared as trial counsel in more than 125 patent infringement, trade secret, licensing dispute and patent-antitrust lawsuits in the U.S. federal district courts, the U.S. International Trade Commission and the Federal Circuit.Close
Peter J. Toren
Peter J. Toren Attorney At Law
Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software... | Read More
Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software and hardware, light emitting diodes, biotechnology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. He has successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act. In addition to intellectual property litigation, Mr. Toren has experience in computer law, including cybersecurity. He is a former federal prosecutor with the Computer Crime and Intellectual Property Section of the Criminal Division of the United States Department of Justice where he worked for over eight years and also served as Acting Deputy Chief.Close