PLI Advanced Patent Licensing Seminar

Practising Law Institute (PLI) will be holding three live sessions of its Advanced Patent Licensing 2010: Current Developments and Best Practices seminar this fall in Chicago (September 30), San Francisco (October 25), and New York (November 8).  In addition, Groupcasts will be held in Atlanta, Philadelphia, Pittsburgh, and Mechanicsburg, PA on November 8.  Each session of the Advanced Patent Licensing 2010 seminar will offer presentations on the following topics:

• What’s Hot in Patent Licensing Law

• Quanta, MedImmune and SanDisk and their progeny:  How licensors are trying to protect themselves from adverse case law;
• How to protect yourself from patent-marking plaintiffs;
• What are the big issues facing patent owners trying to license their patents?
• The crucial patent reps and warranties;
• Strategies to maximize license revenue; and
• Licensee insists on patent indemnification: how do you respond?

• Business and Legal Considerations in Patent Transactions

• The big difference between patent v. technology licensing;
• The importance of offering a "product" that meets your "customer's" needs;
• Good (and bad) candidates for patent transactions;
• Timing considerations;
• Sale v. license (exclusive v. nonexclusive) v. covenant not to sue; and
• Threatening to enforce -- Whom, when, why?

• Analysis of a Patent License Agreement

• The 30 page license agreement:  Where are the land mines?
• Are you a deal killer?  When to kill the deal;
• What makes a patent license fair for both sides?
• What are the hot legal buttons?
• Are patent owners becoming more willing to indemnify against patent infringement?
• Is it better to arbitrate?
• How far can a patent owner push before the potential licensee walks?
• Using fields of use and territorial restrictions to maximize revenues;
• When to sublicense and how to protect yourself;
• How negotiating licenses are different from M&A and other transactions;
• Learn from experienced licensing attorneys using clauses taken from actual agreements;
• You want to pay me in what currency?  How to get royalties back to the States;
• Does it matter which state's or country's law governs?
• Let’s arbitrate in Hawaii!
• When licensees want to pay for prosecution of licensor's patents; and
• Your patents have expired -- Can you still collect royalties?

• Mock Deal Negotiation of a Patent License -- Learn the Key Issues from the Licensor and Licensee Points of View

• Scope of the license (current v. future products);
• What happens when licensed products are made in one country and sold elsewhere (patent coverage, royalty base, tracking, etc.)?
• The importance of reporting, auditing, etc.;
• Dispute resolution issues (choice of law, arbitration, etc.);
• Reps and warranties;
• Statutory restrictions (competition law, misuse, exclusivity, grantbacks); and
• Cultural and other considerations.

• Intersection of Ethics and Lawyers: Professional Liability in Connection with Patent Licensing Negotiations

• You doubt the validity of your client’s patent. Is there any ethical obligation to the licensee?
• When does silence become fraud?
• The parties end up in litigation; Can your firm handle the case if you will have to testify about the negotiation?
• What are the implications of professional liability claims that allege ethical breaches in connection with:  Competence; confidentiality of information; conflicts of interest; declining or terminating representation?
• What adverse consequences are associated with conflicts of interest in patent licensing negotiations?  Disqualification motions and orders, disciplinary actions, forfeiture of fees and malpractice claims.

A full program for the Patent Litigation 2010 seminar can be found at one of the following links:  Chicago, San Francisco, New York, Atlanta, Philadelphia, Pittsburgh, and Mechanicsburg, PA.  The registration fee for the seminar is $1,595.  Those interested in registering for the conference can do at one of the following links:  Chicago, San Francisco, New York, Atlanta, Philadelphia, Pittsburgh, and Mechanicsburg, PA.

Comments

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"You doubt the validity of your client’s patent. Is there any ethical obligation to the licensee?"

Are you an officer of the court?