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
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.
Outline
- Scope of licensed patents
- Indemnification
- Royalty terms
- License of improvements and/or new technologies
- Sublicensing
- Territorial and use restrictions
- Assignment of license
- 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
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
Mr. Augustyn is currently active in all facets of patent litigation, client counseling, and prosecution, particularly in the mechanical arts. He also manages the patent prosecution for several international corporations. Furthermore, he has extensive experience in the drafting and negotiation of agreements relating to intellectual property, including patent licenses, technology licenses, joint venture agreements, and research and development agreements.
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Kristina L. Swanson
Attorney
Leydig Voit & Mayer
Ms. Swanson helps clients secure, protect, enforce, and defend intellectual property rights, including patents, trade... | Read More
Ms. Swanson helps clients secure, protect, enforce, and defend intellectual property rights, including patents, trade secrets, and trademarks. She primarily focuses her practice on prosecution, litigation, and due diligence matters in the biotechnology and chemistry arts.
Recent domestic and international prosecution matters have involved technologies such as cancer vaccines, treatments involving delivery of personalized medicine, nucleic acid sequences, proteins, enzymes, biomarkers, chemical and biological assays, monoclonal antibodies, chimeric antigen receptors (CARs), designer receptors exclusively activated by designer drugs (DREADDs), cell lines, DNA cloning and amplification techniques, genetic vectors, medical treatments, and pharmaceutical compositions. While fascinated by the legal and scientific aspects of her role, she also enjoys having the opportunity to understand the business side of her clients’ companies so she can effectively advise on portfolio management strategies.
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