Seminar  Program

Advanced Licensing Agreements 2019

Why You Should Attend

Intellectual property licensing continues to grow increasingly complex with the legal, regulatory and technical landscape constantly evolving.  Building and maintaining a successful and effective practice requires that practitioners stay sharp and current in a wide variety of key areas. Whether you are using licensing to develop technology, expand or create market opportunities, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit.

Additionally, whether licensing patents, copyrights, trade secrets or trademarks, the ability to structure, draft and negotiate complex license agreements is critical to a successful transaction.

This comprehensive program will feature updates on current legal developments, present case studies highlighting best practices, discuss tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls. 

What You Will Learn  

  • Negotiating strategic alliances and other joint development agreements
  • Advanced considerations in copyright, content, and trademark licensing
  • Software licensing
  • Walkthrough of the key provisions of a license agreement
  • Drafting to account for litigation risks
  • Recent developments in legal enforceability of open source licenses
  • Special contract issues raised by cloud computing
  • Licensing of Big Data
  • Life sciences licensing
  • Addressing international licensing issues
  • Mastering effective negotiation strategies

Special Features

  • Breakout sessions to meet your practice needs
  • Earn one hour of Ethics credit

Who Should Attend

This advanced program is focused on those who already have experience in the substantive area of intellectual property law, and who devote a substantial amount of their practice to licensing.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact or call (800) 260-4PLI.


All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.

Day One: 8:50 a.m. - 5:15 p.m.

8:50 Opening Remarks

Marcelo Halpern, Ira Jay Levy, Joseph Yang

9:00 Party Disputes: Litigation and Case Law Update for Licensing Lawyers
  • Strategic drafting considerations to account for litigation risks
  • Pitfalls, and examples, of sloppy wording
  • Impact of recent cases on drafting and negotiating
  • Arbitration and other dispute resolution considerations
  • Case law update

Ira Jay Levy

10:00 Patent and Technology Licensing
  • Avoiding frequently made mistakes
  • Comparing technology, IP, andblended licenses
  • Why patent licensing is different
  • Understanding grant types and degrees of exclusivity
  • Indemnification and change of control issues
  • Negotiation strategies
  • Licensee and licensor perspectives

Joseph Yang

11:00 Networking Break


11:15 Cloud Computing and Big Data

Cloud Computing

  • What is cloud computing?
  • Comparing SaaS, PaaS, and IaaS
  • Overview of cloud computing legal issues
  • Review special contract issues raised by cloud computing arrangements

Licensing of Big Data

  • Key License Provisions
  • Ownership of Data
  • Regulatory Compliance
  • Indemnification Issues
  • Data Privacy
  • Breach Remedies
  • Termination Provisions
(IAPP Privacy credit for Privacy Professionals)

Raymond R. Ferrell, Peter J. Kinsella

12:45 Lunch

1:45 Special Licensing Topics: Indemnification and Open Source Issues

Topics will vary by city, and may include:


  • Analyze overlaps/differences between R&W and indemnification
  • Is “hold harmless” broader than “indemnify”?
  • How patent guarantees are riskier than non-patent guarantees
  • Carve outs (e.g., modifications, combinations or decisions by the licensee
    • What if the deliverable is intended for incorporation into a larger system?
    • What if the deliverable is intended to be further modified?
    • What if the deliverable is a design but the licensee makes the implementation choices?
  • Comparing tradeoffs vs. liability caps
  • Managing litigation handoff when liability cap is exceeded

Open Source Issues

  • Comparing and understanding popular open source licenses
  • Current developments in open source licensing law
  • Open Source compliance strategies

Themi Anagnos, David G. Rickerby

3:00 Strategic Alliances and Other Joint Development Agreements
  • IP creation conflicts: Default laws vs. parties’ intentions
  • IP allocation: Joint ownership vs. field-based ownership vs. separate entity
  • IP enforcement: Contractual provisions; unauthorized licensees; joinder requirements
  • IP de-allocation: Facilitating or inhibiting separation; bankruptcy
  • Interplay with IP asset management
  • Corporate vs. university partners
  • "War stories" from real-life deals

Joseph Yang

4:00 Networking Break

4:15 Ethical Considerations in Licensing
  • What happens when a friendly deal turns litigious
  • Deceit and candor
  • Cross-border transactions
  • Communications with adverse parties

Ira Jay Levy

5:15 Adjourn

Day Two: 9:00 a.m. - 5:00 p.m.

9:00 Copyright, Content and Trademark Licensing
  • Impact of digital distribution and media on licensing issues
  • Structuring the acquisition of rights in content: licenses vs. assignments and works made for hire
  • The latest developments: copyright termination of transfers and licenses
  • Preexisting content vs. newly created content
  • Licensing for social media and user-generated content
  • Analysis of key contract issues and negotiating points in content licenses
  • Quality control considerations
  • Advanced considerations in trademark and brand licensing
  • Review sample licensing provisions
  • Case law update and licensing implications
  • Implementing a brand licensing program

Kenneth M. Kaufman, Paula Jill Krasny

10:15 Networking Break

10:30 Software Licensing
  • Source code issues
  • Representations, warranties and (the dreaded) indemnification
  • Revenue sharing and auditing
  • Software specifications: Should you care? Yes!
  • Training and support
  • What lawyers should know about (so they can plan for) things that often go wrong after the deal is signed
  • Keeping the relationship on track
  • Regulatory Compliance

Mark S. Holmes

11:30 International Licensing
  • Similarities and differences between U.S., European and Asian licensing
  • Common pitfalls for U.S. lawyers doing foreign deals
  • Local law issues 
  • Cultural issues 

Topics will vary by city, and may include:

  • Differences in types of IP rights
  • License grant provisions
  • Foreign partnership issues
  • Grantback rights issues
  • Economic considerations
  • Governmental approvals
  • Registration requirements
  • Antitrust/competition law overlays
  • Dispute resolution

Marcelo Halpern (Panel Leader); Laura Berton, Robert J. Ranucci

12:45 Lunch

1:45 Breakout Session No. 1b—Analysis of a Content License Agreement
  • Walkthrough and mock negotiation of a complex content license agreement
  • Structuring IP rights allocation
  • Negotiating new media rights
  • Avoiding pitfalls in allocating merchandising rights
  • How to negotiate creative, business and technology control issues
  • Considerations in funding and royalty-sharing
  • Interplay of technology and content issues for digital content

Kenneth M. Kaufman, Jessica L. Rothstein, Mark G. Tratos

1:45 Breakout Session No. 1a—Analysis of a Technology License Agreement
  • Walkthrough of key technology license provisions
  • Avoiding common pitfalls
  • How to address confidentiality and trade secret issues
  • Exclusivity
  • Restricted fields of use
  • Specifications
  • Analysis of warranties and indemnification

Mark S. Holmes, Lars S. Johnson, Debbie K. Wright

2:45 Breakout Session No. 2a—Licensing Issues in the Life Sciences Industry

Topics will vary by city, and may include:

  • Research plan
  • Due diligence
  • How to transition pharmaceutical products/programs
  • Monetary considerations (e.g., royalties, product returns, etc.)
  • IP rights considerations (e.g., ownership, licenses, retained rights, patent term extensions)
  • Comparison of clinical stage vs. commercialized products
  • Addressing government rights and approvals (e.g., march-in rights, clinical trials, FDA approvals)
  • Deal structures and governance

Marya Postner, Lauren Rabinovic, Catherine A. Sazdanoff

2:45 Breakout Session No. 2b—Rights of Publicity Licensing
  • “Natural” v. statutory rights
  • Lifetime v. postmortem rights
  • Rights of publicity in “identifiable objects” symbolizing a persona
  • Rights of publicity releases
  • Liability for violating a right of publicity
  • Differences compared to copyrights and rights of privacy

Mark G. Tratos

3:45 Networking Break

4:00 Negotiation Skills and Tactics
  • How to prepare for license negotiations
  • How to use psychological tools as part of your negotiation strategy
  • Consensus and bridge building
  • Differences between integrative ("win-win") and positional bargaining, and when to use each

Marcelo Halpern

5:00 Adjourn

Marcelo Halpern ~ Perkins Coie LLP
Ira Jay Levy ~ Goodwin Procter LLP
Joseph Yang ~ PatentEsque Law Group, LLP
Themi Anagnos ~ Director of Intellectual Property for the Americas, Continental Automotive
Laura Berton ~ Fieldfisher
Raymond R. Ferrell ~ Executive Vice President – General Counsel & Corporate Secretary, DexYP
Mark S. Holmes ~ CEO, PatentBridge LLC
Lars S. Johnson ~ Senior Counsel - Global Operations, EHS Compliance, and IP Counsel for R&D Nutrition, PepsiCo, Inc.
Kenneth M. Kaufman ~ Manatt, Phelps & Phillips, LLP
Peter J. Kinsella ~ Perkins Coie LLP
Paula Jill Krasny ~ Levenfeld Pearlstein LLC
Marya Postner ~ Cooley LLP
Lauren Rabinovic ~ Divisional Vice President, IP Strategy, Abbott Laboratories
Robert J. Ranucci ~ Vice President and General Counsel, Christie Digital Systems USA, Inc.
David G. Rickerby ~ Boston Technology Law, PLLC
Jessica L. Rothstein ~ Goodwin Procter LLP
Catherine A. Sazdanoff ~ President/CEO, Sazdanoff Consulting, LLC
Mark G. Tratos ~ Adjunct Faculty, University of Nevada Las Vegas Boyd School of Law and Greenberg Traurig, LLP
Debbie K. Wright ~ Former Chief Counsel - Technology Transactions, Kraft Foods (retired)
Program Attorney(s)
Justin Capuano ~ Program Attorney, Practising Law Institute

Chicago Seminar Location

University of Chicago Gleacher Center, 450 N. Cityfront Plaza Drive, Chicago, Il 60611. (312) 464-8787.

Hotel Accommodation

Loews Chicago Hotel, 455 North Park Drive, Chicago, IL 60611.  Please book online at .  You can also call the hotel directly at (312) 840-6600 and reference Practising Law Institute.  Please note this is a corporate rate rather than a group rate. 

Related Items

Handbook  Course Handbook Archive

Advanced Licensing Agreements 2019 Marcelo Halpern, Perkins Coie LLP
Joseph Yang, PatentEsque Law Group, LLP
Ira Jay Levy, Goodwin Procter LLP

  • twitter
  • LinkedIn
  • YouTube
  • RSS

All Contents Copyright © 1996-2019 Practising Law Institute. Continuing Legal Education since 1933.

© 2019 PLI PRACTISING LAW INSTITUTE. All rights reserved. The PLI logo is a service mark of PLI.