US & EU Licensing
Law & Best Practices
- European vs. US License Agreements: Principal Differences
- Drafting Patent License Agreements
- Issues in International Licenses: Language, Choice of Law, Negotiating Agreements
- Unpatented Technology Agreements: CDA, Royalty Base etc.
- Implied Licenses/Patent Exhaustion: Estoppels etc.
- Avoiding Antitrust and Misuse Issues
This distinguishes our event
Aims and objectivesThis course highlights principal differences between the European law system and the US 'common' law systems and explains main 'tricks' and 'traps' to be taken into account by European practitioners when drafting license contracts. The course will focus on drafting and negotiating advice for EU practitioners, with precise references to existing US law. The course lays the groundwork for a clause by clause examination of all significant elements of a patent licensing agreement. Focus is on how and why each provision serves the business needs of the parties while remaining legally viable.
2nd day: 09:00 - 17:00
- Contract principles: EU vs. US law
- The '10W' of contract drafting: 'A chain is as strong as its weakest links'
- Assignment v. exclusive license, agreement to assign v. assignment
- Effects of joint ownership
- Exclusive/Nonexclusive/Sole, Covenant Not to Sue; Express/Compulsory
- Sublicenses/Cross Licenses/ Shopright/Field of Use; Software Licenses
- Preamble, Recitals, Definitions
- The Grant Clause; Improvements
- Determining Reasonable Royalties, Royalty Terms
- Consideration, Payment, International Payment Issues
- Product Liability Indemnification
- Representations and Warranties
- Assignment of the Agreement
- Most Favored Licensee; Best Efforts
- Infringement by a Third Party & Indemnity
- Term and Termination
- Confidential Disclosure Agreements
- Definition of Technology
- Royalty Base Considerations
- Disclaimers and Reservations
- Restrictions of Licensee's Freedom
- Joint Research Agreements
- Implied Licenses by Acquiescence
- Implied Licenses by Conduct
- Equitable Estoppel/Legal Estoppel
- Patent Exhaustion
- Statute; Per se/Rule of Reason
- Relevant Market; Restrictions
- Patent Misuse; Challenging Validity
- Overview of European competition law
- The Technology Transfer Block Exemption
- The R&D Block Exemption
Brian Kacedon focuses on patent licensing, litigation, prosecution, and opinion work. A substantial portion of his practice involves patent licensing and related litigation. Mr. Kacedon's role in these matters has included assisting clients in conducting market assessments for their patents, conducting licensing negotiations, drafting licensing agreements, and participating in related litigations. He also has extensive experience in drafting patent, know-how, and software license agreements in many industries.
Before joining Valeo as Deputy General Counsel, Erik was Head of Procurement and IP/IT Transactions with Johnson Controls, Associate Director of the Business Law and Contracts Division of IFP Energies nouvelles (IFP New Energies), and Legal Counsel of Shell International. Erik has been Vice-President of LES (Licensing Executives Society) France from 2011 to 2014. In addition Erik provides courses on European Business Law at the University of Paris (René Descartes). Erik graduated from the University of Groningen (Netherlands) and has a post-graduate degree in European law from the College of Europe in Bruges.
Timothy May directs his patent practice on a broad range of complex technologies, including automotive safety systems, motors, semiconductors, software, and electronics. He counsels clients in all areas of United States patent practice, ranging from patent procurement to opinion preparation to litigation before U.S. district courts. Mr. May has written hundreds of patent applications and manages the patent portfolios for several companies, from high-tech startups to those in the Fortune 500. He helps clients evaluate inventions in the context of business objectives and applies his extensive prosecution experience to develop internal patent procurement strategies and procedures for clients.
Phone: +49 6221 515-0
Fax: +49 6221 515-506
Each attendee will receive a copy of Brian's standard reference 'Drafting Patent License Agreements' with sample clauses, worth € 250 retail price!
On the first evening of the course FORUM · Institut für Management GmbH is pleased to invite the participants to a behind-thescenes tour in the beautiful castle of Heidelberg, followed by a joint dinner in a traditional and cosy Heidelberg restaurant.
Very valuable, high quality expert knowledge. All sections were very useful, it?s an excellent course.
Very interesting. Teachers are very experienced.
High quality, great presenters. Good atmosphere, high value for my professional day-to-day-life.
The course really met my requirement.
Great and interactive course with a lot of practical examples. Compared US & EU perspective was really helpful.