Tech Transfer Central

Draft Rock-Solid License Agreements and Avoid the Top 7 Litigated Terms

Format: On-Demand Video/Transcript, or DVD
Originally presented: September 23, 2014

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Price: $197
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You’ve made sure to carefully define terms, responsibilities, and compliance expectations in your license agreements.  But what happens when the relationship between the parties to a license agreement turns sour? And what could you have done to prevent a licensee dispute in the first place?

This webinar filled with drafting tips and strategies will look at the top 7 issues that are disputed and litigated when parties to a license agreement become adverse.  During this one-hour program, you’ll learn how to minimize the chances of a host of future complications and disputes: IP ownership, under-reported royalties, failure to support the IP as promised, re-interpretation of definitions, sublicensing issues, and many others. And by knowing — and preparing for — common mistakes and weaknesses in license agreement language, you can strengthen your deals and bring more benefits to your institution and your faculty.

That’s why we’ve tapped license litigation experts Mike Lee and Mark Evens, both directors with the law firm Sterne Kessler Goldstein & Fox PLLC, for this important distance learning program:

Draft Rock-Solid License Agreements
and Avoid the Top 7 Litigated Terms

Join our two attorney experts as they offer practical guidance to help you avoid disputes and, if a dispute occurs, ensure you’re in the best position to prevail and maintain the value invested in your innovations.

Here is a look at the program agenda:

  • Patent Indemnification – Who should indemnify, and the issues involved with assuming the indemnification obligation when actual infringement liability is unclear
  • Pre-existing (background) IP versus Project (foreground) IP – How do you protect your pre-existing IP while also gaining rights to the IP resulting from the agreement?
  • Structuring royalty payments and assuring IP development  – How can the licensor protect against the licensee “shelving” the licensed technology?
  • Patent enforcement – Can the licensee enforce the licensed patent against a third party who is infringing?
  • Termination – what happens when one of the parties wants to terminate the license agreement?
  • Beyond patents: Issues related to licensing trade secrets and trademarks
  • What if the licensee believes the licensed patent is invalid?  What mechanisms are available to attack the patent?  What protection do you have against a licensee’s declarative judgment action?

Meet Your Expert Presenters:

Michael Q. LeeMichael Q. Lee counsels on a wide range of technology-related transactions, including joint development agreements, strategic alliances, license agreements, asset purchase agreements, contractor and services agreements, shrink wrap license agreements and manufacture/supply agreements.  He is a Certified Licensing Professional. Mr. Lee assists his clients with the analysis of and strategies relating to infringement, validity and enforcement positions in a variety of contexts, including litigation, licensing and acquisition matters; analysis, strategy and response to assertive licensing claims; due diligence investigations performed in conjunction with mergers and acquisitions; and ex parte and inter partes re-examination proceedings.

Mark Fox EvensMark Fox Evens chairs the Sterne Kessler Goldstein & Fox Litigation Group, focusing his practice on IP litigation.  With over thirty years of trial and appellate experience, he has developed the requisite skills to persuade both judges and juries by distilling the case to a simple, but compelling story.  He has successfully represented clients in patent infringement cases across a broad spectrum of technologies including medical devices, biotechnology, electronics, software, engineering, food technology and footwear technology.  Mr. Evens has litigated domain name cases, copyright issues, trademark issues, Lanham Act issues, false advertising matters, licensing and contract disputes, including government contract issues, and trade secret cases.

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