Law Seminars International (LSI) will be holding its fourth annual conference on Current Issues in Complex IP Licensing on September 11-12, 2008 in Philadelphia, PA. The workshop will provide information on:
• How to get what you want out of the deal;
• Legal update on major recent and pending cases;
• The fallout from the Tafas/GlaxoSmithKline v. Dudas decision;
• Business structures and receiving full value;
• The intersection of antitrust law and IP protection;
• Social networking and user generated content;
• Trademark and copyright transactions and patent law reform;
• University technology transfer;
• Special issues in information technology, outsourcing, and international transactions;
• Dealing with risky partners; and
• Evolving business, IP, and standards strategies.
In particular, LSI's faculty will offer presentations on the following topics:
I. Current best practices for covering the fundamentals: Making sure there will be a match between what you want to get out of the deal and what you actually get
• A structured approach to verifying the licensor's IP rights and litigation status;
• Third-party technology and rights in the subject matter;
• Verifying the other party's financial stability;
• Tips for resolving issues that are discovered.
II. Legal update of major recent and pending cases
• Patent exhaustion or post-sale license restrictions;
• Quanta Computer v. LG Electronics;
• Implied licenses;
• Licensee Waiver of Sovereign Immunity (Baum Research v. University of MA, CAFC)
III. Update on the fallout from the Tafas/GlaxoSmithKline v. Dudas decision
IV. The lumbering movement towards patent law reform: What are the current proposals and their prospects? How are the elections likely to change the outcome?
• Details of the bill passed by the House;
• What is likely to happen in the Senate;
• Likely impact of the change in administration and political control of the Congress.
V. The impact of business structures on your licensing strategy
• How your selection of a business entity affects taxes, liability, standing and potential damages from infringement;
• Additional business structure considerations for joint ventures;
• Impacts on a licensee's ability to enforce the patent;
• Remedies.
VI. Maximizing the bottom line and receiving full value
• Effective auditing procedures: How to define royalty base;
• Royalty triggering events;
• Parent subsidiary relationships.
• Sub-licensing: Implications of the shift towards partnering as a primary driver;
• Most commonly negotiated rights;
• Provisions relating to licensor rights and licensee responsibilities, and to ensure sub-licensee compliance;
• Typical financial arrangements.
VII. New developments at the intersection of antitrust law and intellectual property protection
• What the IP lawyer needs to know about antitrust in the U.S. and around the world;
• Update on patent tying, standards setting and patent pools;
• Settlement of IP litigation;
• Strategies for structuring transactions to avoid antitrust problems.
IX. Special issues for outsourcing transactions
• Checklist for necessary clauses;
• Terms for ensuring compliance with privacy, information security, and other regulatory requirements;
• Norms for indemnifications, liabilities, and warranties.
X. Social networking and user generated content
XI. Current issues and best approaches for trademark and copyright licensing transactions
• Litigation update: Areas where the cases suggest you may want to update your licensing and protection strategies;
• Current issues arising from the use of trademarks and copyrighted materials on the Internet: Fair use in advertising;
• Web publishing;
• Data sharing arrangements and consumer privacy;
• Regulatory compliance strategies.
XII. University technology transfer and licensing
• The necessary and unique approach for licenses of life sciences technologies from universities and research institutions;
• The differences from traditional licenses between commercial entities;
• The impact on the terms of the deal.
XIII. Special issues in information technology transactions: Licensing and distributing open source with closed source software
XIV. Dealing with risky partners
• Avoiding problems arising from licensing with troubled companies: Update on issues related to the interface between intellectual property law and insolvency law;
• Provisions for licensing agreements to minimize and better control bankruptcy risks.
XV. Special terms for international transactions involving the export or import of technology
• Update on export control and the Freedom of Information Act;
• Technology transfer licensing competition rules in the EU and Pacific Rim.
XVI. Evolving business, intellectual property and standards strategies for the information technology industry
The agenda for the Current Issues in Complex IP Licensing conference can be found here. A complete brochure for this conference, including an agenda, list of speakers, and registration form can be downloaded here.
The registration fee is $497.50 for students and new employees, $795 for government employees, or $995 for all other attendees. Those interested in registering for the workshop can do so here, by calling 800-854-8009, or by faxing a registration form to 206-567-5058.
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