PLI Advanced Patent Licensing Conference

Practising Law Institute (PLI) will be holding a conference entitled: "Advanced Patent Licensing 2008: What You Need to Know Before Licensing Your Patent" on May 28, 2008 in New York, NY and on June 11, 2008 in San Francisco, CA.  The conference will offer presentations on the following topics:

I.  What’s Hot in Patent Licensing Law

• MedImmune and SanDisk -- how licensors are trying to protect themselves from adverse case law
• What you really need to know about patents to license them
• What are the big issues facing patent owners trying to license their patents?
• The crucial patent reps and warranties
• What is a "reasonable royalty"?
• The licensee insists on indemnification.  What should you do?

II.  Critical Issues in Joint Development Agreements/Patent Purchases & Sales

• What is the best treatment of joint inventions in JDAs?  The worst?
• Can you keep your joint developer from becoming your competitor?
• Are patent assignments important in JDAs?
• The key provisions in a patent purchase agreement
• What are the landmines in purchasing patents?
• How to conduct due diligence in patent purchases
• Reservation of rights by seller
• Form of agreement:  IP (patent assignment) vs. corporate (asset purchase agreement)?

III.  Analysis of a Patent License Agreement

• The 30-page license agreement:  Where are the land mines?
• Are you a deal killer?  When to kill the deal
• What makes a patent license fair for both sides?
• What are the hot legal buttons?
• Are patent owners becoming more willing to indemnify against patent infringement?
• How far can a patent owner push before the potential licensee walks?
• Using fields of use and territorial restrictions to maximize revenues
• Learn from experienced licensing attorneys using clauses taken from actual agreements
• You want to pay me in what currency?  How to get royalties back to the States
• Does it matter which state's or country's law governs?
• Let's arbitrate in Hawaii!
• When licensees want to pay for prosecution of licensor's patents
• Your patents have expired;  Can you still collect royalties?

IV.  Mock Deal Negotiation of an International Patent License -- Learn the Key Issues from the Licensor & Licensee Points of View; Ethical Considerations in Licensing

• Perspectives of the licensor and licensee on key issues
• Negotiating international issues
• Hot issues in licensing
• Creating win-win negotiations
• Navigating through controversial provisions

V.  Intersection of Ethics & Lawyers Professional Liability in Connection with Patent Licensing Negotiations

• You doubt the validity of your client's patent.
• Any ethical obligation to the licensee?
• When does silence become fraud?
• The parties end up in litigation; Can your firm handle the case if you will have to testify about the negotiation?
• What are the implications of professional liability claims that allege ethical breaches in connection with:  Competence?  Confidentiality of information?  Conflicts of interest?  Declining or terminating representation?
• What adverse consequences are associated with conflicts of interest in patent licensing negotiations?  Disqualification motions and orders, disciplinary actions, forfeiture of fees and malpractice claims

A full program for the Advanced Patent Licensing conference can be found here (New York) and here (San Francisco).  The registration fee for the conference is $1,395. Those interested in registering for the conference can do so here (New York) or here (San Francisco).