Patent Assignments and Priority in an International Context: U.S., Europe, and Asia
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide patent counsel on patent assignments and priority in the international context, together with key transactional concerns that may arise in the scope of negotiations. The panel will address key considerations for patent counsel, including scope of the assignment, signing issues, corrections, due diligence, representations and warranties, jurisdiction, and choice of law. The panel will also discuss dealing with non-assignment transfers by operation of local/foreign law and assignment issues in the U.S., Europe, and Asia that may arise during negotiations or dealt with post-closing.
- Assignments and patent priority
- Key considerations
- Scope of assignment
- Signing issues
- Acceptability of electronic/digital signatures
- Use of seals
- Notarization, apostille, and legalization
- Effective dates
- Choice of law
- Assignor estoppel
- Non-assignment transfers
- International transactions
- Standard M&A vs. venture capital vs. private equity
- Conducting due diligence
- Representations and warranties
- Dispute resolution
- Best practices
- Patent protection
- Transactional success
The panel will review these and other important issues:
- How do patent assignments in multiple countries impact patent priority?
- What are the significant differences between the U.S. and other jurisdictions' approaches to patent assignments?
- What steps should counsel take when dealing with patent assignments to maximize protection around the world?
- How will patents be dealt with in a standard M&A transaction vs. venture capital investment vs. private equity sale?
- What types of negotiation points will be addressed in the representations and warranties section of a governing transaction agreement and its related disclosure schedule?
- What type of dispute resolution forums should be considered when dealing with an international patent portfolio or an international transaction with patents across multiple jurisdictions?
Harris Bricken Sliwoski
Mr. Bench is chair of the firm’s corporate practice group, where he helps public and private companies with... | Read More
Mr. Bench is chair of the firm’s corporate practice group, where he helps public and private companies with international and domestic business transactions. His clientele includes companies from Asia, Europe, Africa, and the Americas. He co-hosts the firm’s weekly Global Law and Business podcast, which covers legal and economic business developments around the world. He is a regular contributor to the award-winning China Law Blog and the award-winning Canna Law Blog, where he shares his practical insights into doing business internationally and in the cannabis and emerging products industries. Mr. Bench regularly presents to business owners and organizations regarding international business transactions, particularly foreign direct investment and the international cannabis trade.Close
Intellectual Property Attorney
Westman, Champlin & Koehler
Mr. Zuege focuses his practice on intellectual property law in both transactional and litigation settings, including... | Read More
Mr. Zuege focuses his practice on intellectual property law in both transactional and litigation settings, including patent, trademark, copyright, trade secret and domain name dispute matters. This includes international IP application filings and prosecution such as Paris Convention patent applications, PCT applications and related national stage patent applications, and the coordination and supervision of global IP portfolios. Mr. Zuege has extensive experience organizing and conducting complex freedom-to-operate studies, advising on IP strategies, conducting validity/non-infringement opinion of counsel analyses, negotiating agreements, enforcing rights and defending clients in contentious IP disputes, and creating strategic plans for companies. He also writes and speaks about IP issues, and can translate complex legal issues into actionable tips and strategies for clients and their inside counsel. He is the editor and co-author of Patent Freedom to Operate Searches, Opinions, Techniques, and Studies (ABA 2017).Close