Structuring Patent Licensing Agreements: Avoiding Litigation, Allocating Risk, and Maximizing Patent Value
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course 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.
Outline
- Patent licensing agreements: key provisions
- Definitions
- Scope
- Sublicensing rights
- Payment structure
- Improvements
- Patent prosecution
- Term
- Indemnification
- Limitations on liability
- Representations and warranties
- Bankruptcy
- Licenses in joint development projects
- 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 pitfalls should be avoided?
- What lessons can be learned from recent court decisions?
- What factors must be considered to avoid or minimize litigation?
Faculty
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
Mr. Augustyn is currently active in all facets of patent litigation, client counseling, and prosecution, particularly in the mechanical arts. He also manages the patent prosecution for several international corporations. Furthermore, he has extensive experience in the drafting and negotiation of agreements relating to intellectual property, including patent licenses, technology licenses, joint venture agreements, and research and development agreements.
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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
Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software and hardware, light emitting diodes, biotechnology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. He has successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act. In addition to intellectual property litigation, Mr. Toren has experience in computer law, including cybersecurity. He is a former federal prosecutor with the Computer Crime and Intellectual Property Section of the Criminal Division of the United States Department of Justice where he worked for over eight years and also served as Acting Deputy Chief.
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