Terminating Patent Licenses: Key Considerations and Best Practices
Timing, License Terms, Partial Termination, Notice, Wrongful Termination Consequences, Post-Termination Considerations
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide patent counsel on the termination of a patent license. The panel will address whether, when, and how to terminate a patent license and offer practice guidance to manage the associated risks.
- Considerations before terminating
- Termination under the license terms
- Mutual termination or amendment
- Invalidity challenge
- Change of Control
- Expiration and renewal issues
- Post-termination considerations
- Best practices
The panel will discuss these and other important issues:
- What are the key considerations for terminating a patent license?
- What considerations should licensors and licensees keep in mind regarding post-termination of a patent license?
- What are best practices for navigating the practical and legal issues for licensors and licensees when terminating a patent license?
John M. Augustyn
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.
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.
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.
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.
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.
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.
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.
Kilpatrick Townsend & Stockton
Mr. Krieger is a first chair inter partes review and post-grant review litigator with a tremendously successful track... | Read More
Mr. Krieger is a first chair inter partes review and post-grant review litigator with a tremendously successful track record for challenging third-party patents as well as defending against patent challenges brought before the PTAB. He also serves as an adjunct Professor of Law at the University of Denver Sturm College of Law where he teaches a course on PTAB studies. As a registered patent attorney, Mr. Krieger also focuses on client counseling, district court litigation, and patent prosecution. His technical focus includes chemistry, chemical engineering, biotechnology, medical devices, metallurgy, nanotechnology, mechanical engineering and consumer products. He has significant experience managing large domestic and international patent portfolios in these industries. Mr. Krieger lectures and publishes frequently on various intellectual property topics.Close