Tech Transfer Central

The Biggest Surprises in Cross-Border Patent and IP Transactions

Format: On-Demand Video/Transcript, or DVD
Originally presented: Wednesday, April 19, 2023
Price: $197
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The increasingly global nature of technology transfer is making it much more likely that you have, or will, encounter a growing number of “cross-border” IP transactions.

These transactions are very different than the domestic transactions TTOs most commonly handle, introducing additional complexity and in many cases unfamiliarity with country- or region-specific patent and IP rules and regulations. These differences can alter the economics of the deal you sign, and understanding the key provisions that must be carefully handled in cross-border agreements will help you confidently draft and negotiate these transactions.

We’ve put together a top-notch panel to teach you how to do just that. Please join Dr. Joseph R. Snyder and Dr. Siegmar Pohl, partners with Kilpatrick Townsend and Stockton LLP, for this insightful presentation:

The Biggest Surprises in Cross-Border Patent and IP Transactions

Dr. Snyder and Dr. Pohl will review examples of choice-of-law clauses and choice-of-forum provisions that unknowingly change the economics of a deal, and they’ll also cover areas of foreign mandatory law which are most likely to surprise and override key provisions of technology transfer and IP license agreements. Patent law differences in overseas jurisdictions which affect cross-border transactions will also be presented and discussed.

Here is a brief look at specific topics to be addressed in this one-hour session:

  • Interpretation of choice-of-law clauses in Europe versus the U.S.
  • Understanding forum selection clauses in the EU
  • What information regarding certain technologies is subject to an export license
  • Know which patent offices offer the option of a utility model, an automatic grant of patent rights without examination.
  • Can a government allow someone else to produce a patented product or process without the consent of the patent owner or exclusive licensee? The answer may surprise you.
  • Could post-expiration royalties pose any antitrust concerns in the EU?
  • U.S. and EU Tying Standards are similar but applied very differently
  • Know under which circumstances Exclusive Grant Back Clauses will be upheld
  • Compare and understand the EU and individual European countries’ patent grace periods.  
  • Review of China’s post-filed data rules.

Meet your program leaders:

Joseph R. SnyderDr. Joseph R. Snyder
Kilpatrick Townsend and Stockton LLP

Dr. Joseph R. Snyder is the Managing Partner of the firm’s Walnut Creek office. Dr. Snyder focuses his practice on patent prosecution and counseling, emphasizing patent drafting, patent procurement, client counseling and opinion writing, primarily in the chemical arts, biotechnology, life sciences and clean technology. He counsels clients on planning and portfolio analysis for patent protection, including strategic review of technologies’ commercial potential, enforcement of patent rights, and defense of infringement allegations. Dr. Snyder represents U.S. and foreign companies, such as pharmaceutical companies, diagnostic laboratories, universities and start-ups in all areas of intellectual property counseling and protection.

Siegmar PohlDr. Siegmar Pohl
Kilpatrick Townsend and Stockton LLP

Dr. Siegmar Pohl, with over two decades of experience, focuses his practice on cross-border M&A and complex intellectual property (IP) transactions. He frequently represents clients regarding strategic investments and corporate venture capital, including when paired with research and development (R&D) collaborations or joint ventures. Siegmar has extensive experience in working with companies from Europe, Asia, and the United States.

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