Structuring Patent Indemnification Provisions

Allocating Infringement Risk While Accounting for Changes to PTAB Estoppel and Statutory Bar Requirements

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


Conducted on Tuesday, August 28, 2018

Recorded event now available

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Program Materials

This CLE webinar will prepare counsel to IP owners, licensees and licensors to protect their interests by allocating patent infringement risks during negotiations of indemnification provisions in a patent license or vendor contract. The panel will offer best practices for negotiating and structuring patent indemnification provisions to allocate risk.

Description

Indemnification provisions are often overlooked but are a critical part of any patent agreement. Drafting and negotiating indemnification provisions are crucial to protecting business interests and minimizing litigation costs.

In developing an indemnification strategy, counsel must be aware of the interplay between indemnification and IPR statutes. Estoppel and statutory bar requirements also mean counsel must negotiate and structure indemnity provisions with an eye to AIA changes.

Counsel to all parties must carefully consider the scope of liability covered by the indemnification obligation, liability triggers and indemnification of third parties when negotiating the contract terms.

Listen as our authoritative panel of patent attorneys examines structuring of patent indemnification provisions and what factors patent counsel should account for when negotiating and drafting indemnification clauses. The panel will offer best practices for negotiating and structuring patent indemnification provisions to allocate risk.

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Outline

  1. Agreements in which such indemnification provisions are likely to appear
  2. Common structures for indemnification provisions
  3. Allocating infringement risk, and distinguishing indemnification of patent claims from indemnification of other IP claims
  4. Indemnification and IPRs
  5. Best practices for negotiating and structuring patent indemnification provisions

Benefits

The panel will review these and other noteworthy issues:

  • What should patent counsel consider when structuring indemnification provisions?
  • When does an indemnification clause create privity under the IPR statutes?
  • What approaches should counsel use to protect a client’s interests when negotiating an indemnification provision?

Faculty

Giltinan, William
William (Ty) Giltinan

Shareholder
Carlton Fields Jorden Burt

Mr. Giltinan is the intellectual property and technology practice group leader. He is a licensed patent attorney whose...  |  Read More

Yost, Eleanor
Eleanor M. Yost

Shareholder
Carlton Fields Jorden Burt

Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals,...  |  Read More

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