US & EU Licensing

This course provides drafting and negotiating advice for EU practitioners, with precise references to existing US law.

• 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 objectives

This 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 theparties while remaining legally viable.
Do you work as a corporate IP/patent/legal counsel or professional or as a patent attorney/attorney-at-law in private practice and deal with licensing issues?

Then this course is designed for you. Knowledge of IP law is required.

1st day: 10:00 - 17:30
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

1.840,- € plus tax

1.840 € + 19 % German VAT - The fee includes course documentation, speaker's reference book as well as mid-session refreshments and lunch. Invoice and confirmation will be forwarded to you.

Berliner Str. 85
80805 München
Phone: +49 89 159 061-0
Fax: +49 89 159 061-712
Hotel-Website
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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.

IP Counsel

Excellent material.

Patent counsel

Very interesting. Teachers are very experienced.

Inhouse Counsel

High quality, great presenters. Good atmosphere, high value for my professional day-to-day-life.

Senior Patent Counsel

The course really met my requirement.

Konrad Hauber, IP Manager
Hochland SE

Great and interactive course with a lot of practical examples. Compared US & EU perspective was really helpful.

Aude Gaslonde, Patent Attorney
sanofi-aventis groupe