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 theparties while remaining legally viable.
Then this course is designed for you. Knowledge of IP law is required.
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 devotes a substantial portion of his practice to conducting licensing negotiations, drafting licensing agreements and participating in related litigations.
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.
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 89 159 061-0
Fax: +49 89 159 061-712
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.