Subject to change
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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.
The speakers will briefly describe their experiences with negotiating PRV terms in license agreements, and how PRvs factor into their research programs.
The speakers will then delve into the nuts and bolts of some successful strategies each has used to negotiate reasonable and mutually acceptable revenue sharing terms for Priority Review Vouchers (PRVs) in agreements, particularly exclusive license agreements. We will also discuss ways of determining what each party contributed to the clinical development of the drug of interest that may be eligible for a PRV in the future and carefully thinking about “unique” market considerations such as extremely small patient populations, or disproportionally affects poor and marginalized populations.
The panelists will discuss the following guidelines during the panel discussion:
Strategies for maximizing life science commercialization in view of such heightened standards
IP protection strategies
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Join us for a panel discussion examining approaches to technology partnering with global health organizations to widen market channels and increase access to medical products in underserved markets. The panel will discuss how funding and licensing collaborations between non-profit, multilateral, and industry partners can achieve meaningful and measurable improvements in equitable, global access, without diminishing commercial opportunities. You will hear practical guidance on access-oriented agreement terms, as well as real-world examples of implementing global access partnerships, and metrics for measuring their success beyond revenue generation.
Know the adversary and know yourself,
In a hundred battles you will never be in peril.
-The Art of War, Sun Tzu
The numbers speak for themselves: China accounted for nearly 40% of patents granted worldwide. Chinese companies including Huawei, ZTE and Xiaomi hold about 40% of 5G patent families. In 2022, Huawei was ranked top 7 by the number of utility patents granted by the USPTO, and Xiaomi was among the major companies with the highest annual growth rates in US patents granted.
Chinese companies have also been active in patent transaction market. While they are still buying patents, they have started to monetize their patents through selling and licensing. When negotiating with a Chinese patent buyer or seller, a foreign party will have to resolve the issues that any cross-border transaction would usually encounter. More importantly, there are many challenges specific to Chinese parties that foreign parties would have to address, especially under the current economic and trade relationship between China and the rest of the world.
This panel brings together three IP veterans who have extensive experiences in this regard. Two of the panelists are the top IP executives from two of the largest patent owners in China, which are also among the most active players in patent transaction market. The third panelist is one of the earliest cross-border patent transaction experts specializing in brokering patent deals between Chinese and foreign parties, who has closed deals with nearly 10,000 patents over the past 14 years. They will discuss key issues and share their insights in negotiations involving major types of technologies and patents such as wireless communication and SEPs.
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.
Venture capitalists and universities got together for over 1-1/2 years and hashed out a template License Agreement that, if adopted by more universities and investors, could greatly speed up negotiations. The template agreement allows for negotiations around issues of particular importance to the parties but uses standard definitions and traditional compromises to make the process more efficient and effective. This is just the beginning of a deal-making trend that you need to know about!
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.
It is preferable that the panelists which have diverse occupations with different backgrounds and experiences can join in the panel discussions to share insights, success and lessons with the audience and help the brand owners to improve their strategy in brand protection in China. By covering the topics such as Changes in IP Practice of Life Science in China, Licensing Developments in China, IP Valuation in China – Increasing Damages Awarded by Chinese Courts and Best Practice and Strategy of Trademark Enforcement in China, we hope that the panel discusssions may keep the audience updated on the current status and trends of IP and licensing practice in China and help their IP deals in China.
The Inflation Reduction Act of 2022 (the IRA or the Act) is poised to reshape Medicare pricing, the reimbursement of drugs, commercial practices, and the drug development landscape in the biopharmaceutical industry. Life sciences deal makers need to understand the Act’s intricacies and implications in order to successfully navigate this changing environment. This workshop will provide a brief overview of the IRA’s drug price negotiation program and follow that overview with a discussion that analyzes the impacts of the Act on licensing transactions from the perspective of global pharmaceutical companies (typically licensees), biotech companies and academic institutions (typically licensors), and venture capitalists. The aim of the workshop will be to provide attorneys and other deal makers with knowledge of both IRA drug pricing issues and the contractual levers available to help them find solutions and close licensing deals.
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Merger and acquisition activity in the biopharmaceutical industry declined dramatically on both a volume and value basis in 2022. However, biopharmaceutical licensing and collaboration deals have fared better with overall values increasing slightly over the prior year. Given current economic and regulatory uncertainty, biopharma companies appear to be placing greater emphasis on licensing partnerships as opposed to acquisitions.
Notably, the portion of life science partnership deals relating to preclinical assets has been increasing steadily over the past several years. These preclinical assets are often platform technologies including everything from cell and gene therapies to digital assets and devices. The complexity of these promising new technologies can lead to larger and more complex intellectual property portfolios consisting of not just multiple patents but also trade secrets and know-how.
This panel will discuss approaches for partnering around increasingly complex assets at various stages of development.
Come and hear the results of the 2022 LES Physical Sciences (formerly CEEM) Royalty Rates & Deal Terms Survey at a workshop hosted by the coordinators of the survey.
This survey has not been run since 2010 and the data generated from the 2022 survey will be added to historical data from past surveys to provide LES members with not only an update on the current trends in the market, but also a retrospective look at how licensing practices have changed over the years. Physical Sciences includes: Environmental Sciences, Chemicals, Physics, Earth Sciences, Manufacturing, Energy, Materials, and other physical sciences or engineering areas that do not fit in the High Tech or Life Sciences sectors. The survey reports help explain how licensing deals are structured and why, and they also show the rationale behind the licensing of parties and what specific licensing features are chosen and used. This information provides a valuable benchmarking tool that IP and licensing professionals depend on to deliver value to their organizations. Use of the survey information also extends to lawyers, corporate finance and investment professionals, and beyond.
The objective of this workshop is to help large and small patent owners to monetize and/or right size their patent portfolios thru patent sales or acquisitions. The session will focus on “dos and don’ts” of executing such transactions and provide.
The IP transactions market has gained considerable attention in recent years. All indicators point towards increased activity in this area. The goal of most buyers is to create or enhance an existing IP portfolio while most sellers seek to improve their financial position or cash out a failed business or cleaving of a business division. While many aspects of buying/selling IP are similar to those of a regular property transaction, there are several things patent buyers and sellers can do to expedite, exalt and enhance the experience of each party.
This session will highlight several “dos and don’ts” that both buyers and sellers can and should implement to execute a smooth and a successful transaction. The workshop will provide practical tips on how to expeditiously close patent deals.