Patent Licensing: Advanced Tactics for Licensees Post-AIA

Structuring Contractual Protections and Responding When Licensed Patents Are Challenged in Post-Grant Proceedings

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


Conducted on Thursday, October 16, 2014

Recorded event now available

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Program Materials

This CLE webinar will offer guidance to patent counsel on addressing patent licensing issues for licensees post-AIA. The panel will discuss incorporating protections in the license agreement and responding when a licensed patent is the subject of a post-grant proceeding.

Description

The AIA has fundamentally impacted the patent licensing environment. The new, faster AIA post-grant proceedings, such as inter partes review (IPR), allow for a complete determination to be made on patent validity in a process that pits the patent owner against the challenger before the Patent Trial and Appeal Board (PTAB).

The expedited PTAB proceedings, however, are limited to the patent owner and challenger(s) only. This means that a party whose rights are at stake in a determination of validity, but who is not the patent owner or the challenger—i.e., a licensee—may have its rights adjudicated without any opportunity to participate at the PTAB.

Patent counsel should understand how to effectively build protections into the license as well as respond when there is an attempt to invalidate a licensed patent in an IPR or other post-grant proceeding.

Listen as our authoritative panel of patent attorneys examines the issues facing patent licensees in light of the new post-grant proceedings. The panel will offer best practices for licensees to protect themselves in the license and to respond to efforts to invalidate a patent, which is the subject of a license.

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Outline

  1. AIA changes that impact licensees
  2. Protection challenges for licensees
  3. Responding to attempts to invalidate a licensed patent in post-grant proceedings
  4. Best practices

Benefits

The panel will review these and other key issues:

  • How has the AIA impacted patent licensing?
  • What steps can licensee counsel take to effectively build protections into the license itself?
  • How should licensees respond when a challenger attempts to invalidate a licensed patent in an AIA post-grant proceeding?

Faculty

William C. Coppola
William C. Coppola
Senior Patent Counsel
Sanofi-Aventis

Mr. Coppola has over 20 years of experience representing numerous clients, including universities, regarding a wide...  |  Read More

April Weisbruch
April Weisbruch

Atty
Goodwin Procter

Ms. Weisbruch is a certified patent attorney and focuses on all aspects of intellectual property, including patent...  |  Read More

Eleanor M. Yost
Eleanor M. Yost

Partner
Goodwin Procter

Ms. Yost's practice focuses on protecting and enforcing patent, trademark, copyright and other intellectual...  |  Read More

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