Subject to change
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Due Diligence is the research conducted prior to engaging in a business transaction. This course will provide guidance on how to develop and implement a due diligence strategy for a deal involving intellectual property (IP). It will discuss the What, When, Where, Who and How to perform due diligence depending on the deal and its importance to your organization.
Modules will cover aspects of technical due diligence (e.g., technical readiness), legal due diligence (e.g., ownership, remaining legal life of IP assets, freedom to operate), and Commercial and financial due diligence (e.g., market size, market growth, pricing).
Are you new to licensing? Knowing what not to do key to getting a long-term deal that protects IP and generates revenue. Get a step or two ahead in your deal making by learning from experienced LES members’ and avoid your own costly mistakes. You’ll feel confident negotiating fair and reasonable terms, reducing and shifting risks, and creating clear and enforceable license agreements where both parties win.
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Brought to you by the same team that presented the standing-room-only 2022 LES Annual Meeting session titled “Shall vs. Will: Terms of Obligation”, this hands-on interactive session will focus on helping licensing professionals who are serious about improving the quality of each licensing contract they negotiate. Three particular portions of a license that nobody likes to deal with are: 1) Representations & Warranties; 2) Indemnities; and 3) Ownership of Improvements. These three problematic areas are often viewed as ‘boilerplate’ provisions that can be signed without reviewing, yet glossing over these contract portions can result in significant legal and financial liabilities for a firm that fails to understand potential risks. We’ll quickly “tee up” the background and a few horror stories from these three areas, then give “best practice” tips and suggested language that you can take home and review with your own counsel for inclusion in your current and future licensing deals.
Join an engaging roundtable session where you will learn about key terms that often causes tension in negotiating from a sample term sheet. Then negotiate with your tablemates and report out the final resolution. Panelists will provide an introduction and overview from a variety of perspectives, including university, industry, and outside counsel. Then they will set you loose to be your company’s hero.
The panel will focus on topics of practical significance to the changing IP dealmaking landscape and preparing IP and licensing professionals to handle new developments in legal, technological, and business practices they’ll face in the next few years through the lens of LES Standards. And will highlight how LES is leading the way in Dealmaking Trends in the Evolving Innovation Economy through the ANSI-accredited LES Standards Development Organization.
Three LES Standards Board members are presently planning the panel content and full roster of speakers. The session will focus on practical ways in which the Standards matter, as well as the current process and opportunities available to everyone in the IP dealmaking space. The focus areas for every Standard were selected by leading experts with decades of experience. And each Standard is a result of a consensus drafting process by representative committees of experts on the topic of the Standard.
Learn more about how these directly on point Standards can improve your work, benefit the profession and make the IP dealmaking landscape more efficient. And for those interested in learning more about and helping shape their profession, opportunities for engagement.
Since the beginning of 2022 there has been a great deal of discussion about the basics of the new European patent system which, after years of delay, is scheduled to become a reality on 1 June 2023. One extremely important aspect of the new system – the Unitary Patent and Unified Patent Court – that has received insufficient attention is the effect that this will have on the dynamics between licensors and licensees and between patent co-owners. Indeed, under the new system the interests of licensors and licensees will not be as aligned as they are under the current system and, thus, it’s time to reevaluate and renegotiate certain strategies related to patent prosecution and enforcement. Likewise, co-owners will face additional issues in the management of co-owned patent rights which will be governed by specific provisions of the UPC Agreement or (European) national law.
Licensors, licensees, and co-owners should take some comfort in the knowledge that such issues can be effectively and efficiently addressed in properly drafted agreements.
The proposed panel that will tackle this important and neglected topic includes people with a diverse range of backgrounds and experiences: a US attorney with a great deal of licensing experience as our moderator and speakers from a US university, a Certified Licensing Professional from Europe, and a licensing executive from an innovative European company. The speakers will take a practical approach to these issues from their respective points of view.
I have extensively studied court decisions about disputes involving licensing “rules of thumb” or “boilerplate.” It turns out that there can be substantial risk in using these. There are many cases where courts ignored or found exceptions to what was intended. Or the drafter simply used them incorrectly. Either way, the result was an unpleasant surprise (often involving the loss of rights). Similar to Russell Levine’s annual “Top 10” talk, this would be a single speaker presentation (based on deep research, which I’ve already done) rather than a panel format (which is more suitable for comparing a broad range of personal experiences). Unlike Russell’s talk (which covers a broad range of topics that came up in the last 12 months), this would focus on a specific theme (the risks of blindly copying / reusing supposedly “standard” or “tried and true” language without thinking about the consequences) and not be limited to the last 12 months.