Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk and Maximizing Patent Value

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


Conducted on Thursday, March 24, 2016

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

Companies are turning to their patent portfolios to increase its value through monetization or other strategic initiatives. A successful licensing program can significantly raise a company’s valuation, but the licensing and enforcement environment has become more challenging. To take full advantage of the value of its patents, companies use licensing to direct competitors and companies in related industries to generate additional revenue.

Licensing agreements should include key provisions such as indemnification, limitations on liability, sublicensing rights and payment structure with an eye toward avoiding litigation. The parties should also keep in mind the Supreme Court’s 2014 decision in Medtronic v. Mirowski Family Ventures when considering inclusion of additional protections against actions being brought by licensees.

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 structure 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—key provisions
    1. Scope
    2. Representations and warranties
    3. Risk allocation
    4. Limitations on liability
    5. Indemnification
    6. Sublicensing rights
    7. Choice of venue
  2. Licenses in joint development projects
  3. Best practices for structuring licensing agreements

Benefits

The panel will review these and other key issues:

  • What are the key contract terms to include in patent licensing agreements?
  • What steps should be taken when structuring 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?

Faculty

John M. Augustyn
John M. Augustyn

Shareholder
Leydig Voit & Mayer

Mr. Augustyn is currently active in all facets of patent litigation, client counseling, and prosecution, particularly...  |  Read More

Peter J. Toren
Peter J. Toren

Weisbrod Matteis & Copley

Mr. Toren has represented clients for over 20 years in intellectual property and commercial litigation matters...  |  Read More

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