What Can Go Wrong After a License Agreement is Reached - IIPLA

What Can Go Wrong After a License Agreement is Reached

Categories: IP COURSES
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About Course

About the Course:

Unlocking the Potential of Your Invention: Navigating Licensing Challenges

Congratulations! You’ve created an invention, secured a patent, and executed a licensing agreement with a powerful licensee eager to promote your product. You might think your work is done and it’s time to sit back and collect royalties.

However, the reality is often more complex.

Many inventions fail to reach the market despite being licensed to major players. This course provides crucial insights into the barriers that can prevent promising technologies from achieving commercial success, even when licensees show strong interest.

Who Should Attend:

  • Inventors anticipating royalty revenues
  • Analysts modeling the probabilities of receiving such revenues

Key Topics Covered:

  1. Potential pitfalls in patent licensing negotiations that could derail an agreement
  2. Benefits of executing Term Sheets or Memoranda of Understanding during negotiations
  3. Importance of obtaining a Freedom of Operations Opinion Letter before engaging with potential licensees
  4. Value of licensor indemnifications to licensees
  5. Appropriate compensation for licensors during the regulatory approval process for the technology
  6. Necessity for licensors to access regulatory data collected by licensees during technology testing
  7. Inclusion of third parties on licensor-licensee steering committees
  8. Pros and cons of licensing into a centrally managed company
  9. Challenges of licensing into a franchise system and potential impacts on the licensee’s execution plan
  10. Role of unions in impeding the roll-out of a technology despite the licensee’s efforts

Course Leaders:

  • William J. Cotreau, Senior Counsel, E.I. du Pont de Nemours and Company
    • Senior patent lawyer at DuPont since 1999
    • Senior counsel to DuPont’s Intellectual Assets Business (IAB)
    • Extensive experience in drafting and negotiating intellectual property agreements and patent applications
  • Martin Lindsay, Director of Strategic Business Development, Bowers & Wilkins
    • Established Bowers & Wilkins’ automotive licensing business
    • Formerly with Dolby Laboratories, contributing to significant growth in their licensing portfolio and new market strategies

Course Length:

  • Approximately 1 hour


  • $175 per user
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