LES 2017 Spring Meeting

Best Practices in Licensing: Developing, Negotiating & Executing Transactions
Schedule

 

 

May 8-9, 2017
Kilpatrick Townsend & Stockton LLP
607 14th Street, NW, Suite 900
Washington, DC 20005
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May 8
8:00–9:00 am Continental Breakfast/Networking
9:00–10:30 am Building Up and On Your IP Foundation
10:30–11:00 am Networking Coffee Break
11:00–12:30 pm Anatomy of a License Agreement (Part 1)
12:30–1:30 pm Luncheon
1:30–2:30 pm Anatomy of a License Agreement—Exploring More Strategic Clauses in View of Litigation and Case Law Issues for Licensing (Part 2)
2:30–3:00 pm Networking Coffee Break
3:00–4:30 pm Everything You Need to Know About IP Valuation Theory and Practice
4:30–5:30 pm Pharma-University Relationships, Regulatory and Governmental Issues in Licensing
5:30–7:00 pm Networking Reception
May 9
8:00–9:00 am Continental Breakfast/Networking
9:00–10:30 am Exploring Key Issues and Clauses in Multi-National IP Licensing and Acquisition: Avoiding Pitfalls in International Licensing
10:00–10:30 am Networking Coffee Break
10:30–11:30 am Software Licensing, Open Source Licenses and Cloud Computing Issues
11:30–12:30 pm A Strategic Approach to Identifying, Evaluating and Executing IP Licensing and Acquisition Deals, Alliances and Joint Venture Agreements
12:30–1:30 pm Luncheon
1:30–3:00 pm Gaining the Skills and Knowledge You Need to Productively Negotiate and Close Deals
3:00–3:30 pm Networking Coffee Break
3:30–4:30 pm Continuing the Skills and Knowledge You Need to Productively Negotiate and Close Deals
4:30–5:30 pm Ethics for the Negotiator

Detailed Schedule

9:00–10:30 am

Building Up and On Your IP Foundation

The program will begin with a discussion of the legal underpinnings of Patent, Copyright, Trade Secret law and protection. Trademark law is surveyed in overview from procurement to enforcement. Contemporary examples, commentary and discourse on everyday issues in licensing and technology transfer are covered in an interactive presentation. We will “dive deep” into IP law for subject matter and insight at a more intermediate level and understanding for those with several years of experience in IP transactions.

Speaker: Michael Baniak, CLP
General Counsel and Chief IP Counsel Global
EOS of North America

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11:00–12:30 pm

Anatomy of a License Agreement (Part 1)

This session will explore the “anatomy” of a general and research license agreements. We'll walk through a real-life license agreement, covering the terms that are typically encountered. Pitfalls and best practices will be reviewed, with examples in the context of real life transactions.

Speaker: Michael Q. Lee, CLP
Partner
Sterne, Kessler, Goldstein & Fox

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1:30–2:30 pm

Anatomy of a License Agreement—Exploring More Strategic Clauses in View of Litigation and Case Law Issues for Licensing (Part 2)

Several provisions in a license agreement may be equal in importance or, in some cases, more important than the license grant language. Among those are the termination clause and the provisions that go hand-in-hand: warranties, disclaimers, indemnification, limitation of liability, and much more. Companies angst over them, and whole deals, corporate futures and attorney careers can be negatively impacted on the terms of these license agreement clauses. Proper language for these terms and conditions will be proposed, discussed and analyzed in a time when much of the law is in flux. The legal precedents that are being minted and changed today will be discussed as they apply to these licensing considerations, with a view toward what this all means tomorrow.

Speaker: John Paul, CLP
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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3:00–4:30 pm

Everything You Need to Know about IP Valuation Theory and Practice

“What is my IP worth?” is one of the most common but misunderstood issues in effective licensing. In this session, IP valuation theory (cost, market, income and more) will be thoroughly analyzed, giving participants insight into “what it is we are buying/selling.” Pre-evaluation due diligence, an example using the income approach to valuation, along with unique considerations of transaction structure will be discussed and shared.

Speaker: Michael Lasinski, CLP
Managing Director
284 Partners, LLC

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4:30–5:30 pm

Pharma-University Relationships, Regulatory and Government Issues in Licensing

With increasing pressure to innovate and shrinking corporate R&D budgets, industry-university collaborations continue to be a top issue. Learn about the cultural and legal basis for the apparent disconnect between academia, government and industry; the most common types of relationships; and practical strategies for negotiating and drafting the agreements covering these interactions. Differing drivers and motivations for each side of the deal will be discussed.

Speakers: Dr. Louis P. Berneman, CLP
Founding Partner
Osage University Partners

Kathleen A. Denis, PhD, CLP
Associate Vice President Technology Transfer
The Rockefeller University

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May 9

9:00–10:15 am

Exploring Key Issues and Clauses in Multinational IP Licensing & Acquisition: Avoiding Pitfalls in International Licensing

This portion of the seminar expands beyond North America to address key issues and clauses that confront the practitioner in multinational licensing and acquisition of IP. Typical European Community and the Pacific Rim considerations are addressed, along with other regional-specific issues that should be taken into consideration.

Speaker: Robert F. Held, CLP
President
Held Intellectual Property, LLC

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10:30–11:30 am

Software Licensing, Open Source Licenses and Cloud Computing Issues

This session will explore important issues that need to be considered when handling software-specific development, licensing and transfer. Open source software and how it can impact a transaction is a significant issue and how to identify and deal with it in various contexts will be examined. We will also discuss cloud computing, copyright and patent considerations and standards in the software world.

Speaker: Karen Copenhaver
Partner
Choate Hall & Stewart

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11:30 am–12:30 pm

A Strategic Approach to Identifying, Evaluating and Executing IP Licensing and Acquisition Deals, Alliances and Joint Venture Agreements

Join us as we discuss the elements of how to identify, assess and execute on an opportunity for licensing or other acquisition of rights. Learn how to evaluate the significance of a deal and prioritize goals and questions that should be addressed when considering a deal.

Speaker: Tatiana Moore, CLP
President
T.K. Moore & Associates, LLC

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1:30–3:00 pm

Gaining the Skills & Knowledge You Need to Productively Negotiate & Close Deals

This is an interactive, hands-on session on how to negotiate transactions. This session is case study based, focusing on providing attendees with knowledge and skills for establishing and maintaining positive and productive negotiations. A strategic approach and practical considerations to preparation, presentation, negotiation and closing the deal will be addressed.

Speaker: Michael J. Dansky, CLP
Managing Director
BRG Capstone

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3:30–4:30

Continuing the Skills and Knowledge You Need to Productively Negotiate and Close Deals

This is the continuation of the previous session.

Speaker: Michael J. Dansky, CLP
Managing Director
BRG Capstone

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4:30–5:30 pm

Ethics for the Negotiator

This closing seminar is a deep-dive discussion into the standards that apply to all involved in licensing negotiation —whether lawyer or lay-person. Various legal, business and societal standards are reviewed and scenarios are presented as examples. Pragmatic approaches to often difficult situations are evaluated with the attendees, bringing real-life experiences to highlight the “do’s and don’ts” in conducting oneself in an honorable and ethical manner.

Speaker: Michael Baniak, CLP
General Counsel and Chief IP Counsel Global
EOS of North America

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