IP and Technology Licensing: August 23 and 24 Live in Seattle and Via Webinar

China IP licensing

On August 23 and August 24, Law Seminars International will be putting on An Advanced Conference on Current Dealmaking Trends for IP and Technology Licensing: Tips for efficiently and effectively monetizing intellectual property. 

This event will be live at the Courtyard Marriott in Pioneer Square in Downtown Seattle and also via webinar wherever you are. Go here to get a pdf of the entire program. I will be speaking on the second day regarding “enforceable contracts as a starting point [for IP protection]: Classic pitfalls foreigners fall into when dealing with Chinese entities, like drafting in English, and other key considerations.”

Per the organizers:

Who Should Attend. Attorneys, business executives, licensing professionals, and others involved with complex licensing transactions.

Why You Should Attend.  Licenses are one way of bringing intellectual property to life. Without licenses, IP rights lay dormant until weaponized in court. Licenses allow IP to be commercialized, accessed and harmonized without resorting to aggressive enforcement. In today’s climate of constant change and tighter budgets, the ability to spot, craft, draft and negotiate license agreements efficiently and effectively is more important than ever for licensors and licensees.

This conference provides insights on developing issues arising from drafting and negotiating licenses, updates on case law, changes in technologies that impacts licensing, and the rise of new international players in IP licensing.

Join our distinguished faculty as they address the above and additional licensing issues from both outside counsel and in-house perspectives including a panel on problematic clauses and what to do about them.

What You Will Learn. 

  • ~ The anatomy of an effective license agreement
  • ~ NDAs as the courting phase of the licensing relationship
  • ~ Case law update: Recent cases impacting IP licensing values
  • ~ Assigning and licensing trademarks
  • ~ Biopharmaceutical trends including licensing for joint ventures and as a result of collaborative activities
  • ~ Compulsory licensing, Standard Setting Organizations, and FRAND
  • ~ Managing compliance
  • ~ International licensing with China
  • ~ Provisions for resolving licensing disputes
  • ~ Wrap-up: Mock negotiation of a hypothetical licensing agreement

The seminar will consist of the following:

DAY ONE

Introduction & Overview, 9:00 a.m.

Adam L.K. Philipp, Esq.
AEON Law / Seattle, WA

Ramsey M. Al-Salam, Esq.
Perkins Coie / Seattle, WA

 

The Anatomy of an Effective License Agreement, 9:15 a.m.

Core essential terms, including exclusivity, lump sum versus sales-based royalties, royalty bases and rates, exclusions, standard forms and provisions, warranties, indemnities, audit rights, keeping IP from competitors, “poison pill” provisions

Steve Tapia, Esq. , Distinguished Practitioner in Residence
Seattle University School of Law / Seattle, WA

 

NDAs as the Courting Phase of the Licensing Relationship, 10:30 a.m.

The structure and essential terms of non-disclosure agreements; the “new world” of NDAs and how they affect high tech joint ventures; lessons from the Waymo/Uber dispute about protecting trade secrets

Adam L.K. Philipp, Esq.

 

Case Law Update: Recent Cases Impacting IP Licensing Values, 11;15 a.m.

An update on how recent decisions affect the value of IP rights and the enforceability of licensing agreements

Ramsey M. Al-Salam, Esq. , Program Co-Chair
Perkins Coie / Seattle, WA

 

Assigning and Licensing Trademarks, 1:15 p.m.

The need to transfer good will and police the quality of goods sold under a license; the ability of bankrupt licensors to extinguish licensee rights and the impact on pre-bankruptcy negotiations when relations are strained; unique cannabis issues

Jerry A. Riedinger, Esq.
Perkins Coie / Seattle, WA

 

Biopharmaceutical Licensing, 2:00 p.m.

Transactional trends including licensing for joint ventures and as a result of collaborative activities

Gary M. Myles, Esq. , President & CEO
Myles Intellectual Property Law / Issaquah, WA

 

Managing IP Compliance, 3:00 p.m.

Structuring an effective process for counting royalties, tracking work product, regulatory compliance, patent marking, trademark quality control, audit rights, verifying “best efforts”, “most favored” clauses, and anticipating other issues

Neil Zoltowski , Principal
StoneTurn Group / San Francisco, CA

 

Compulsory Licensing, Standard Setting Organizations, and FRAND, 4:15 p.m.

When you have no choice: Where compulsory licensing comes into play including when it’s “necessary” to practice a standard

T. Andrew Culbert, Esq.
Perkins Coie / Seattle, WA

 

Continue the Exchange of Ideas: Reception for Faculty and Attendees, 5:00 p.m.

 

DAY TWO

International Licensing: Adapting to Recent Developments in China, 9:00 a.m.

An enforceable contract as a starting point: Classic pitfalls foreigners fall into when dealing with Chinese entities, like drafting in English, and other key considerations

Daniel P. Harris, Esq.
Harris Bricken / Seattle, WA

New rules on IP transfers; importing & exporting technology; potential impacts from recent trade negotiation; IP enforcement statutory changes, administrative enforcement, and increased damages awarded by courts

Ping Gu, Esq.
Zhong Lun Law Firm / Beijing, China

 

Provisions for Resolving Licensing Disputes, 10:30 a.m.

Choice of resolution technique in the license and choice of technique when enforcing the license: substantive and procedural considerations for choice of law; mediation and arbitration clauses; enforcement stage choice of forum

Mark Wittow, Esq.
K&L Gates / Seattle, WA

 

Wrap-Up: Mock Negotiation of a Hypothetical Licensing Agreement, 11:15 a.m.

Identifying what is most important to your opponent; provisions to tailor the agreement to the type of license and situation; anticipating potential problems from changes in control and adverse events; tips for working through problematic provisions

Steven B. Winters, Esq. , Moderator
Lane Powell / Seattle, WA

Licensee perspective

Jeff Harmes, Esq.
Karcher Harmes / Bainbridge Island, WA

Licensor perspective

Hillery L. Nye, Esq. , General Counsel
Zipwhip / Seattle, WA

I know or know of many of these attorneys and I am very much looking forward to hearing their talks and I urge anyone with an interest in IP go here and sign up. If you use HARRIS as your promo code, you will get a 50% discount.

This article was written by Dan Harris and published on China Law Blog. Original Post: https://www.chinalawblog.com/2018/08/ip-and-technology-licensing-august-23-and-24-live-in-seattle-and-via-webinar.html      

View the original article here.

Dan Harris

Dan Harris is internationally regarded as a leading authority on legal matters related to doing business in China and in other emerging economies in Asia. Forbes Magazine, Business Week, Fortune Magazine, BBC News, The Wall Street Journal, The Washington Post, The Economist, CNBC, The New York Times, and many other major media players, have looked to him for his perspective on international law issues.