transcript   Transcript

A Deeper Look at Deal Dynamics & Terms: Analysis of a Patent License Agreement

Recorded on: Sep. 17, 2018
Running Time: 01:59:10

Full Transcript:

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Taken from the Web Program Advanced Patent Licensing 2018 Recorded September, 2018 in San Francisco [01:59:10]
  • Learn from experienced licensing attorneys using clauses taken from actual agreements
  • The 60-page license agreement: Want to learn where the land mines are?
  • Are you a deal killer? Sometimes you should be. Learn when.
  • Why would licensees want to pay for prosecution of licensor's patents?
  • When to sublicense and how to protect yourself
  • Not all licenses are created equal: how to get the upper hand
  • Are patent owners becoming more willing to indemnify against patent infringement?
  • You want to pay me in what currency? How to get royalties back to the States
  • When arbitration works. When it fails.
  • Fields of Use or Fields of Dreams? How territorial and use restrictions can maximize revenues
  • Why negotiating licenses are different from M&A and other transactions

Mark S. Holmes, Panel Leader; Suzanne Y. Bell, William H. Hamby, Winston E. Henderson, Carrie M. LeRoy, Meredith M. McKenzie

The purchase price of this Web Program segment includes the following article from the Course Handbook available online:

  • Specimen Provisions from Patent License Agreements; Excerpts reprinted from Practising Law Institute, Patent Licensing and Selling: Strategy, Negotiation, Forms (2nd Edition)
    Mark S. Holmes
  • Mark S. Holmes, Ch. 17: Strategies for the New Patent Law Frontier, Practising Law Institute, Patent Licensing and Selling: Strategy, Negotiation, Forms (2nd Edition) (November 2017)
    Mark S. Holmes
  • Carrie LeRoy and Maya Ziv, Patent License Drafting Considerations in Contemplation of M&A
    Carrie M. Leroy
Suzanne Y. Bell ~ Covington & Burling LLP
William H. Hamby ~ Corporate Counsel, Specialty Products Division, DowDuPont™
Winston E. Henderson ~ Vice President, General Counsel, Nano Terra, Inc.
Mark S. Holmes ~ CEO, PatentBridge LLC
Carrie M. LeRoy ~ Gibson, Dunn & Crutcher LLP
Meredith M. McKenzie ~ Vice President & Deputy General Counsel, Juniper Networks, Inc.
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