Patent Licensing Agreements
Crafting Effective Contracts to Avoid Litigation, Allocate Risk and Maximize Patent Value
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will prepare IP counsel to craft effective patent licenses by reviewing key clauses and licensing in joint development projects. The panel will outline best practices for structuring the agreement to avoid litigation, allocate risk and maximize patent value.
Outline
- Patent licensing agreements — standard clauses
- Defining scope of the license
- Representations and warranties
- Risk allocation
- Limitations on liability
- Indemnification
- Sublicensing rights
- Licenses in joint development projects
- Ownership and rights to improvements
- Patent pools and patent misuse
- Best practices for structuring licensing agreements
Benefits
The panel will review these and other key questions:
- What are the key contract terms to include in patent licensing agreements?
- What steps should be taken when crafting a licensing agreement in the context of a joint development project?
- What factors must be considered to structure a patent license to avoid or minimize litigation?
Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.
Faculty
Peter J. Toren
Attorney
Shulman Rogers Gandal Pordy & Ecker
He is an intellectual property litigator who has first-chaired patent and trademark trials and dozens of Markman,... | Read More
He is an intellectual property litigator who has first-chaired patent and trademark trials and dozens of Markman, preliminary injunction and summary judgment hearings in federal courts . He has successfully litigated patent matters involving complex legal and factual matters concerning technologies, including computer software and hardware, LEDs, bio-technology, semiconductors and business methods.
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Carey C. Jordan
Partner
McDermott Will & Emery
Ms. Jordan focuses on patent prosecution, transactions and strategic portfolio management in the chemical, energy and... | Read More
Ms. Jordan focuses on patent prosecution, transactions and strategic portfolio management in the chemical, energy and alternative energy sectors. She develops IP portfolios for start-up and established companies, including formulating patent procurement strategies; obtaining domestic and foreign patents; handling prosecution procedures, and negotiating technology license and acquisition agreements.
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