Patent Licensing: A Deep Dive Into Licensing Landmines

Navigating Scope, Indemnification, Royalties, Sublicensing, Territorial and Use Restrictions, and More

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

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Conducted on Thursday, February 24, 2022

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Course Materials

This CLE course will guide patent counsel on the most problematic areas in patent licensing. The panel will dive into the scope, indemnification, royalty terms, sublicensing, territorial and use restrictions, and more. They will offer best practices for navigating these licensing landmines.

Description

Patent licenses are a primary tool for monetizing patents. When well-drafted, a license agreement can provide substantial income for the licensor and a business opportunity for the licensee. However, if a license agreement is poorly drafted, it can lead to litigation and cost millions of dollars.

For example, a poorly written license may include the following problem areas. Does the license have the proper scope including future patents and/or technology? Does the indemnification address potential risks for the licensor and the licensee? Is sublicensing permitted? If so, what rights may be sublicensed? Are the royalty terms clear and do they adequately address future products?

By understanding the critical elements and the potential landmines in patent licensing agreements, counsel for patent owners and licensees can effectively draft and negotiate the agreement in their clients' best interests.

Listen as our authoritative panel of IP attorneys examines several of the most problematic areas in patent licensing. The panel will do a deep dive into scope, indemnification, royalty payments, sublicensing, territorial and use restrictions, and more. They will offer best practices for navigating these licensing landmines.

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Outline

  1. Scope of licensed patents
  2. Indemnification
  3. Royalty terms
  4. License of improvements and/or new technologies
  5. Sublicensing
  6. Territorial and use restrictions
  7. Assignment of license
  8. Best practices for navigating licensing landmines

Benefits

The panel will review these and other key issues:

  • Which licensing provisions present the most challenging landmines?
  • What are the lessons from recent court decisions?
  • What steps should counsel take to minimize the risk of encountering licensing landmines?

Faculty

Augustyn, John
John M. Augustyn

Shareholder
Leydig Voit & Mayer

Mr. Augustyn is currently active in all facets of patent litigation, client counseling, and prosecution, particularly...  |  Read More

Swanson, Kristina
Kristina L. Swanson

Attorney
Leydig Voit & Mayer

Ms. Swanson helps clients secure, protect, enforce, and defend intellectual property rights, including patents, trade...  |  Read More

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