Licensing IP and Technology: Advancing the Concepts in 2016
Licensing of patents, trademarks and copyrights is a basic necessity of companies worldwide. It is a means of deriving commercial value from intellectual property. Businesses worldwide consider three broad categories of licenses, namely technology licenses, publishing and entertainment licenses, and trademark and merchandising licenses. Licensing is fundamental to business models throughout the technology industry and beyond. Therefore, it is important to review and secure requirements when licensing IP and Technology.
In a two-hour LIVE Webcast, a panel of seasoned professionals and thought leaders assembled by The Knowledge Group will provide the audience with the fundamental aspects of Licensing IP and Technology. The panel will also provide the audience their expert opinions and best practices in licensing IP and technology.
Key topics include:
- Licensing IP and Technology – An Overview
- Trends in Licensing
- Strategies for Licensing
- Advantages and Disadvantages of Licensing
- Licensor and Licensee Obligations
- Royalty Determinations in Licensing
- Legal Challenges in Licensing
- Possible Liability in Licensing
Martin P.J. Kratz, Q.C., Head, Intellectual Property
Bennett Jones LLP
- The choice of licensing vs. other options
- Differences between IP and technology licenses
- Understanding the IP involved
- e.g. Internet of things, other novel technologies
- Due diligence
- Paying attention to the licensing deal itself
- The grant clause – good and bad examples
- Performance management
- Royalty audits
- Inspection rights
Robert L. Vigil, Principal
- Key factors affecting a royalty determination
- Relative contribution of the technology
- Sources of contribution
- Increased sales
- Higher prices
- Lower costs
- Use of entire market value rule
- Use of smallest saleable unit
- Sources of contribution
- Profitability of the licensed product
- Extent of use of the licensed technology
- Availability of technology alternatives
- Relationship between the parties
- Relative contribution of the technology
Jeffrey G. Mote, Shareholder
Greenberg Traurig, LLP
Hot Button Patent Licensing Issues
- Patent Exhaustion- Lexmark case
- Patent Pool and Standard Essential Patent Licensing
- Key cases re determination of reasonable royalties for Standard Essential Patents
- Anti-trust issues
- Recent trends in patent damages
Who Should Attend:
- Licensing Attorneys
- License Negotiators
- Licensing Executives
- Business Executives
- Top Level Management
- Multinational Companies
- Private and Public Companies
- Other related/interested Professionals and Organizations
Martin Kratz leads the intellectual property and co-leads the ecommerce practice for Bennett Jones. His practice is focused on intellectual property and technology law, including substantive IP and IP transactions, procurement, commercialization, strategy and opinions, anti-spam, data protection, privacy, ecommerce, strategic alliances, mergers, acquisitions and technology transfers among technology companies. His practice includes the software, telecommunications, electronic commerce, entertainment, energy and pharmaceutical industries. He teaches IP Transactions at Osgoode Hall Law School's IP LLM program.
Martin Kratz leads the intellectual property and co-leads the ecommerce practice for Bennett Jones. His practice is focused on intellectual …
Dr. Vigil specializes in the application of economics and finance to intellectual property and general commercial litigation matters. His work includes the assessment of damages in complex litigation cases, including analyses of lost profits, reasonable royalties, price erosion, and unjust enrichment. In non-litigation matters, Dr. Vigil he has assisted clients in valuing intellectual property for sale or license; identifying and evaluating potential partners for licensing, acquisition, or divestiture of assets; and analyzing the impact of generic entry on prices and market shares of brand name pharmaceutical products.
Dr. Vigil is a member of the American Economic Association and the Licensing Executives Society, and is a frequent speaker on issues related to intellectual property valuation and damages assessment.
Dr. Vigil specializes in the application of economics and finance to intellectual property and general commercial litigation matters. His work …
Jeff is a member of Greenberg Traurig's Chicago IP & Technology practice group where he is a patent attorney and litigator with a wide-ranging intellectual property litigation and counseling practice. Jeff’s practice focuses on the protection, enforcement and defense of intellectual property rights. He has litigated patent, copyright, trademark, unfair competition and trade secret cases throughout the United States and before the U.S. Patent and Trademark Office for a broad range of clients.
Jeff also manages, oversees and polices the intellectual property portfolios for several large, middle market and startup entities. He has extensive experience negotiating and preparing intellectual property and technology license agreements, non-disclosure agreements and employee non-compete covenants. He also represents clients in intellectual property transactions, including those involving mergers and acquisitions, licensing and intellectual property portfolio management.
Jeff is a member of Greenberg Traurig's Chicago IP & Technology practice group where he is a patent attorney and …
Print and review course materials
Method of Presentation:
NASBA Field of Study:
NY Category of CLE Credit:
Areas of Professional Practice
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
About Bennett Jones LLP
Bennett Jones LLP is an internationally recognized Canadian law firm. The firm and the affiliated and associated entities that comprise Bennett Jones have more than 380 lawyers and business advisors and 500 staff in nine Canadian and international offices – Calgary, Toronto, Edmonton, Ottawa, Vancouver, Doha, Washington, DC, Bermuda, and a representative office in Beijing. We continue to broaden and deepen our representation of clients in key global business centres, and build our profile and relationships around the world. With exceptional experience in complex cross-border and international transactions, the firm is ideally suited to advise foreign businesses and investors with Canadian ventures, and connect Canadian businesses and investors with opportunities in the US, Asia, the Middle East, and around the world.
About Analysis Group
Since 1981, Analysis Group has provided expertise in economics, finance, health care analytics, and strategy to top law firms, Fortune 500 companies, global health care corporations, and government agencies. Our work is grounded in a collaborative approach that allows us to effectively integrate the best ideas from leading academic and industry experts with our more than 600 professionals. As a result, our clients receive thoughtful, pragmatic solutions to their most challenging business and litigation problems. Through our work in thousands of cases across multiple industries, we have become one of the largest economics consulting firms in North America, with 11 offices in the United States, Canada, and China.
About Greenberg Traurig, LLP
Greenberg Traurig is an international, multi-practice law firm that helps clients bridge diverse legal systems and cultures, with a focus on efficient and effective strategic advice and legal services. GT has over 1900 attorneys and governmental affairs professional in 38 locations around the world, including the United States, Latin America, Europe, the Middle East and Asia.