Negotiating High-Tech Patent Sales and Licenses - IIPLA

Negotiating High-Tech Patent Sales and Licenses

Categories: IP COURSES
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About Course

About the Course:

Don’t miss this rare opportunity to listen to a senior Microsoft executive discuss how he negotiated some of the largest and most complex patent transactions in history. Lessons are shared from the Novell, Nokia, AOL, Facebook and General Electric patent transactions. Among the issues discussed during this webinar are:

  • How does negotiating patent transactions with a publicly-traded company compare with negotiating against a privately-held company?
  • What should be agreed upon early in patent sales negotiations regarding notice under the patent statute?
  • What should be agreed upon early in patent sales negotiations regarding challenges to the validity of the patents?
  • When buyers are represented by agents in patent negotiations, when is the identity of the actual buyers revealed?
  • How is it that running patent auctions introduces two sets of negotiations?
  • What due diligence should be conducted with respect to patent families in the context of a transaction?
  • What are the restrictions associated with obtaining injunctions with respect to the purchasing of patents that are declared as essential patents?
  • What are some of the typical limitations imposed on the grant back of licenses?
  • What is the significance of transferring privileged files connected to patents that are being sold?
  • What is the level of difficulty associated with removing liens on patents when the lienholders are hedge funds?
  • What is the automatic threshold in patent sales in the triggering of Hart-Scott-Rodino Antitrust Improvements Act?

Course Leader: Steven P. Fricke, Senior IP Counsel, Microsoft Corporation

Mr. Fricke’s responsibilities include the worldwide licensing of patents and technology in and out of Microsoft, and the purchasing and selling of Microsoft intellectual property assets. Steven helped negotiate numerous intellectual property agreements including Microsoft’s agreements with Novell, Nokia, AOL, Facebook, and a joint venture with General Electric. Steven is a frequent lecturer on intellectual property matters at Microsoft, the Washington State Bar Association, and Washington State Patent Law Association.

Steven has extensive experience with commercializing intellectual property and licensing patented technology. Prior to joining Microsoft, Steven was an IP litigation partner at the US intellectual property law firms of Townsend Townsend and Crew LLC and Christensen O’Connor Johnson & Kindness PLLC. Steven has represented clients in a variety of courts throughout the United States, including the U.S. Court of Appeals for the Federal Circuit and Ninth Circuit. Prior to entering law, Steven worked as a design engineer for the Boeing Company. Steven holds a degree in Law, a master’s and a bachelor’s degree in Aerospace and Aeronautical Engineering and is registered to practice before the United States Patent and Trademark Office.

Course Length: Approx. 1.0 hours


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