About the Course:
Patent and trade secret licensing agreements can be both exhaustive and highly nuanced. There are thousands of possible permutations of such licensing contracts. Understanding the intricacies of licensing agreements is imperative for both licensors and licensees. Overlooking one facet of these agreements can be ruinous to inventors and commercializers. Our top-notch webinar goes a long way in preparing licensors and licensees for high stakes licensing negotiations.
The webinar discusses negotiating and drafting the following issues, among others, in licensing agreements:
- The perils of failing to fully define “Licensed Patents” and “Licensed Products.”
- The frequent necessity for licensing when selling to the government.
- The consequences to a sublicensee when a license is terminated between a licensor and a licensee.
- The propriety and concerns with licensors granting “have made” rights to licensees.
- The safeguarding of confidential information during royalty audits.
- The application of most favored licensee status.
- Rights and/or obligations for the prosecution of infringers.
- Provisions to limit indemnifications.
- Responsibilities for drafting, filing and prosecuting further patent applications.
- The assignability of licenses when a licensee files for bankruptcy protection.
- Licensor’s exposure to the licensee’s patent mismarking.
- The possible intersection between improvement rights and anti-trust challenges.
- The rights and responsibilities of licensors and licensees when their counterparts file for bankruptcy protection.
Course Leaders: John Augustyn, Shareholder, Leydig, Voit & Mayer, Ltd.
John Augustyn represents clients in high stakes patent litigation, client counseling, and prosecution. His litigation experience has involved various industries, and he has obtained or saved several millions of dollars for his clients. In addition, John has extensive experience in the negotiation of agreements for many well-known products and technologies. Furthermore, John manages the patent prosecution for several international corporations. He has authored numerous articles and chapters for books, has appeared on multiple television and radio programs, and has provided seminars for attorneys and clients. Mr. Augustyn was a law school instructor for several years. Prior to attending law school, he worked as an engineer and in management at Fortune 100 companies.
Course Length: Approx. 1.5 hours