Negotiating Patent Infringement Indemnification

About the Course:

Manufacturers and their suppliers are often confronted with the issue of patent infringement indemnification. Failure to consider a range of issues that could arise with respect to allegations of patent infringement at the outset of a business relationship could present ruinous liabilities for suppliers and end producers.

This webinar presents the listener with a thorough primer on negotiating patent infringement indemnification agreements. Valuable advice is rendered relative to issues such as:

• Indemnity caps
• Liability periods
• Exclusion of claims
• Willful patent infringement

Among the other issues ventilated during this session are:

• What are some of the clauses for triggering “Duty to Defend”?
• What are some of the ways that “prompt notice” can be construed?
• What impact does the eventual determination of patent invalidity have after indemnities have been paid?
• Who typically controls the defense strategy? How is this affected if the indemnified party does not believe the indemnifying party has acceptable financial strength?
• How is settlement of patent infringement determined between the indemnifying and indemnified parties?
• What preferences do indemnity claims have when the indemnifying party declares bankruptcy?
• To what extent can the indemnifying party require the indemnified party to acquire patents to use to countersue asserters?
• What is the role of insurance in patent infringement indemnification?
• How receptive are end manufacturers to their suppliers providing non-infringing substitutes?

Course Leader: Robert E. Krebs, Partner, Nixon Peabody

Robert Krebs focuses his practice on intellectual property litigation, patent prosecution, and patent portfolio analysis. He has current technical qualifications and extensive experience in telecommunications, electronics, software and medical device technologies.

Robert has previously held positions as both general counsel and patent counsel for the technology company subsidiaries of a Fortune 500 corporation (now Baker-Hughes).

Robert is a frequent speaker on patent matters, including patent litigation and software patents.

Robert was named one of California’s “Top Patent Lawyers” in California Lawyer, and recently the Bay Area Lawyer named him as one of the six “Top Patent Litigators” in Northern California. Additionally, Robert has been recognized as a “Super Lawyer” by Northern California Super Lawyers magazine for ten consecutive years. Intellectual Asset Management magazine has also named Robert to its “IAM 250–A Guide to the World’s Leading IP Strategists.”

Course Length: Approx. 1.0 hours