DAY ONE
9:00 a.m. to 5:00 p.m. (Registration Opens at 8:00 a.m.)
KEY ELEMENTS TO CRAFTING YOUR DEAL
Preparing for the Deal
- Identifying How and When to Use IP Licenses as Tools of Business
- Legal characteristics and business functions of IP licenses
- When are IP licenses necessary with start-up innovators?
- Exploring the Fundamentals of Licensed IP Rights
- Understanding patents, trademarks, copyright; trade secrets and
confi dential information and other types of intellectual property,
and how the characteristics of each infl uence the terms of a license
- Understanding when to license IP to protect rights
- How to Conduct Due Diligence and Ensure You Get What You Pay For
- How to conduct searches and what the search results mean
- How to confirm the validity of the patent, trademark or copyright
- What if IP rights are unregistered or in process of registration?
- Understanding the rights contained in the registered document
Clearly Defining the Grant of Rights and Sublicensing
- How to defi ne the subject matter of the license, types of IP rights
and licensed activities and to whom the license is granted
- How to restrict the territory, fi eld of use and exclusivity
- How to structure rights to sublicense
- Cross-licenses and grant backs
Exploring the Compensation and Payment Options
- Current valuation models and payment issues
- How will you structure the payments: single or continuing, fi xed sum
or percentage?
- Basis for calculation of royalties; triggering events; withholding tax
and other cross/border issues
- What records, reports, and audits rights are required?
DRAFTING THE AGREEMENT TO CLARIFY
THE PARTIES’ OBLIGATIONS
Covenants
- Covenants of licensor (e.g. disclosure, training and support)
- Covenants of licensee (e.g. standard of performance; minimum sales)
Representations and Warranties: Licensor and Licensee Perspectives
- Representations and warranties by licensor (e.g. title, enforceability,
functionality)
- Representations and warranties by licensee (e.g. operating capabilities,
quality of products)
- Limitations on representations and warranties
Indemnities, Limitations of Liability, and Insurance
- Indemnities by licensor and by licensee: IP violations; product liability
- Limitations of liability
- Control of defence and insurance issues
Lunch will be served on both days
DAY TWO
9:00 a.m. to 5:00 p.m. (Coffee Served at 8:30 a.m.))
INDUSTRY AND REGULATORY ISSUES
Protecting Valuable IP: Strategies for Success
- Prosecuting applications; maintaining patents and registrations
- Agreements with employees and independent contractors
- Improvements, enhancements and modifi cations
- The perils of joint ownership
Proactively Enforcing and Defending IP Rights
- Notifi cation of third party violations; discretion or obligation to enforce
- Carriage of litigation
- Settlement issues
Miscellaneous Provisions
- Assignment and change of control
- Amendments and renewals
- Dispute resolution
- Choice of law and jurisdiction
Managing Legislative and Regulatory Burdens
- Import and export restrictions and reporting requirements
- Privacy legislation and consumer protection
- Industry-specifi c law and regulation
- Franchising
- Impact of competition law
Focusing on Industry-Specific Challenges
- Discussing issues of particular relevance in industries identifi ed
by registered delegates. Issues may include structuring license
provisions effectively for collaborative research agreements and the
challenges imposed by joint venture relationships
TERMINATION, RENEWAL AND INTERNATIONAL ISSUES
Insolvency: Protecting Your Interests
- How insolvency may impact a license
- Impact of recent amendments to insolvency legislation
- Issues unresolved by legislative amendments
How to Renew a Good Thing!
- Issues to consider in settling the terms of a license
- The relevant factors in structuring a renewal clause
Termination and Post-Termination Issues
- Automatic v. option to terminate and termination for breach
- Post-termination transitional rights
- Terms which may survive termination
IP License Agreements Across Borders: International Issues
- Government notifi cation and approval
- Payment and tax issues
- Import and export restrictions
INTERACTIVE EXERCISE: REFINE YOUR SKILLS!
Bring together everything you have learned over the two day course
by participating in this hands-on exercise. Learn practical strategies for
success from the experts.
Conference Details