Drafting Patent License Agreements
- Pitfalls to avoid in patent license agreements
- License scope, third party infringements and further standard problems
- Drafting complex patent license agreements
- Interactive case studies with drafting exercices
- Best practice take aways
Aims and objectivesThis interactive workshop has been created to increase your confidence when drafting successful patent license agreements section by section. Our trainers will lead you through the standard problems of patent license agreement clauses. After exploring the pitfalls in complex patent license agreements, you will receive numerous tips and tricks during the drafting exercises based on practical scenarios. Your drafting skills with regard to patent license agreements will be improved under the guidance of our highly experienced speaker and through discussions among a group of professionals.
- Failing to secure all necessary patent rights in the license grant
- Unspecified scope of the patent license grant (fields, affiliations, territories)
- Third party infringements: failing to secure adequate rights to enforce patent rights
- Exhaustion of patent rights - challenges
- Limiting transfer by licensee of a patent license
- Addressing treatment of sublicensee post-term
- Failing to adequately address effect of termination
- Scope of performance obligations
- FRAND problems
- Underlying scenario: Licensing for the purpose of ending a patent dispute
- Drafting a License agreement under European/US law
- Unique license fee
- Royalties beyond life time of 'last-to-remain' patents
- Package Licenses
- Underlying scenario: Licensing-out of unused technology to company marketing products with licensed technology
- Drafting a license agreement under European/US law
- Exclusive license
- Improvement Clause
- Package Licenses
Peter is a German and US attorney-at-law as well as a certified licensing professional. He specialises in all aspects of intellectual property work, including patent, trademark and copyright, antitrust, litigation and licensing. Peter has over 30 years of experience in litigation and IP arbitration. Peter is a past president of LESI and a member of IAM 250. He is the co-editor of 'International Licensing and Technology Transfer: Practice and the Law', a commentary on licensing in an international context.
Before joining Valeo, Erik was Head of Procurement & IP Transactions EMEA of Johnson Controls and Associate Director of the Business Law and Contracts Division of IFP Energies nouvelles and Legal Counsel of Shell International.
NL 1054 Amsterdam
Phone: +31 20 6075555
Fax: +31 20 60075511
Attendees opting for the course with the speaker's book will receive a copy of the licensing commentary co-edited by Peter (the main body of the loose-leaf publication with a retail price of €461).