Patent Licensing: Deep Dive Into Licensing Pitfalls
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 pitfalls.
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 pitfalls
Benefits
The panel will review these and other key issues:
- Which licensing provisions present the most challenging pitfalls?
- What are the lessons from recent court decisions?
- What steps should counsel take to minimize the risk of encountering licensing pitfalls?
Faculty
John M. Augustyn
Shareholder
Leydig Voit & Mayer
John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client... | Read More
John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client counseling, and prosecution. Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that IP and business issues require creative and cost effective legal solutions. He has authored several articles and chapters for books, has appeared on multiple television and radio programs, has taught law school classes, and has provided over 30 CLE programs to thousands of corporate and outside counsel. His legal success has been recognized by selection to Best Lawyers, Super Lawyers, IAM Patent 1000, Top 100 High Stakes Litigators, Fellow to Litigation Counsel of America, and other honors. Please click on his photo above for more information.
Litigation
John has been lead counsel in patent and trade secret litigations throughout the country at the trial and appellate levels. He also has been lead counsel in Post Grant proceedings at the USPTO and coordinated post grant proceedings in other countries. In addition, he has litigated cases at the International Trade Commission. His litigation experience has involved several areas, including electronics, magnetics, sensors, control systems, medical devices, automotive, and consumer products.
Opinions
John counsels and renders opinions on patent infringement and invalidity including major product launches in competitive patent landscapes. These opinions often involve large patent families with multiple US patents and with existing litigations and patent office proceedings throughout the world.
Patent Prosecution
He has extensive experience in formulating patent strategies and managing patent portfolios. John manages the US and non-US patent prosecution for several international corporations. He has prepared or supervised the preparation of over 1000 US original patent applications and oversaw the prosecution of over 3000 non-US patent applications.
Due Diligence
John performs due diligence for mergers and acquisitions. The due diligence involves an analysis of the patents, trademarks, trade secrets, licenses, agreements, products, services, manufacturing processes, software, marketing, and standards by standard setting organizations.
IP Agreements
He successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee, including patent licenses, technology licenses, trade secret agreements, joint venture agreements, trademark agreements, and research and development agreements.
Trade Secrets
John advises clients on trade secret matters including: litigating trade secret cases, negotiating trade secret agreements, advising clients on the best techniques for protecting their trade secrets, and helping clients decide whether to use trade secret versus patent protection.
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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