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

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


Conducted on Tuesday, May 21, 2019

Recorded event now available

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Program Materials

This CLE webinar will prepare IP counsel to craft 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 their 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. Companies use licenses with direct competitors and companies in related industries to generate additional revenue and to take full advantage of the value of its patents.

Licensing agreements should include critical provisions such as payment structure, sublicensing rights, indemnification, and limitations on liability with an eye toward avoiding litigation. By understanding the essential elements to include—and the common pitfalls—in patent licensing agreements, counsel for patent owners and 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. Definitions
    2. Scope
    3. Sublicensing rights
    4. Payment Structure
    5. Improvements
    6. Patent Prosecution
    7. Term
    8. Indemnification
    9. Limitations on liability
    10. Representations and warranties
    11. Bankruptcy
  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 are the steps to structure 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

Augustyn, John
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

Toren, Peter
Peter J. Toren

Attorney
Peter J. Toren Attorney At Law

Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software...  |  Read More

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