Patent Licensing Agreements

Crafting Effective Contracts to Avoid Litigation, Allocate Risk and Maximize Patent Value

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


Conducted on Wednesday, December 21, 2011

Recorded event now available

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Program Materials

This CLE webinar 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.

Description

To maximize the value of its patents, companies use licensing to generate additional revenue. Non-patent owners look to licensing to improve their products by using existing technologies.

Licensing agreements should include key provisions such as indemnification, limitations on liability, sublicensing rights and payment structure. The agreements must clearly identify the technology that is being licensed and define the scope of the license -- with an eye toward avoiding litigation.

By understanding the critical elements to include—and the common pitfalls—in patent licensing agreements, counsel for patent owners and for licensees can prepare to effectively craft and negotiate the agreement in their clients' best interests.

Listen as our authoritative panel of patent attorneys examines patent licensing agreements, including standard clauses and variations to those clauses, sub-licensing rights, and licensing in joint development projects. The panel will offer best practices for structuring the agreement to avoid litigation, allocate risk and maximize patent value.

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Outline

  1. Patent licensing agreements — standard clauses
    1. Defining scope of the license
    2. Representations and warranties
    3. Risk allocation
    4. Limitations on liability
    5. Indemnification
    6. Sublicensing rights
  2. Licenses in joint development projects
    1. Ownership and rights to improvements
    2. Patent pools and patent misuse
  3. 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
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

Jordan, Carey
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

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