Schedule and Faculty

Schedule times listed below are for the live seminar. Times for replays may differ due to varied start times and abbreviated lunch and break periods. Please refer to the DATES/LOCATION tab for individual replay start times.

8:30 – 8:55 a.m.

CHECK-IN & CONTINENTAL BREAKFAST

8:55 – 9:00 a.m.

WELCOME & INTRODUCTION

9:00 – 10:30 a.m.

Joint Development Agreements

Many view joint development agreements as the most complicated type of IP agreement. New developments in statutes and case law are adding to that complexity – causing us even to question and revise the basic practices that have, for decades, guided drafting them. From both business and legal perspectives, this session will discuss advanced topics – including these new developments – related to negotiating and drafting joint development agreements, including:

  • A model that can be used to make structuring these deals easier;

  • Use of a specialized NDA to avoid one of the more common traps posed by case law developments impacting the negotiation phase;

  • Handling important ownership allocation and license grant clauses;

  • How recent developments in exhaustion principles can impact whether your client profits from participating in a JDA;

  • Concerns and tips when dealing with state organizations (e.g., universities) and federal agencies or departments (via CRADA’s);

  • A file-keeping tactic that makes negotiation and enforcement easier;

  • A drafting strategy to reduce bankruptcy risk; and

  • An antitrust pitfall that can be avoided by careful drafting.

– David G. Burleson & David B. Kagan

10:30 – 10:45 a.m.

BREAK

10:45 – 11:00 a.m.

10 LEGAL PRACTICE TIPS

Hiring People for Ideation

  • What about obligations to former employers?

  • What kind of background checks can you do?

– Sharon Zehe

11:00 a.m. – 12:30 p.m.

Joint Ventures

This session tackles key questions about how to structure and start up a joint venture from the intellectual property/product development perspective. Topics will include:

  • What roles do traditional master services agreements and nondisclosure agreements play in joint ventures?

  • What if in addition to the collaborative efforts, the parties also have competing products?

  • What are appropriate licensing structure options for these new ventures?

  • Who owns developments and intellectual property from the joint venture?

– Robert B. Leonard & Jonathan L.H. Nygren

12:30 – 1:30 p.m.

LUNCH (on your own)

1:30 – 2:45 p.m.

Technology Transfer

Your client has decided to engage in technology transfer – including “know how” – either as the current IP owner or the desired recipient. This session focuses on key issues including:

  • Strategic use of legal mechanisms for the transfer that best protect your client’s IP interests in the context of the deal;

  • International considerations such as export controls, required government approvals, proportional ownership, trade secrets traps, and more;

  • And more.

– John L. Crimmins & Eran Kahana

2:45 – 3:00 p.m.

10 LEGAL PRACTICE TIPS

Standards-Essential Patents (SEPs)

  • F/RAND licensing issues

  • Competition law issues

  • Pending legislation

  • Potential litigation issues

– Damien A. Riehl

3:00 – 3:15 p.m.

BREAK

3:15 – 3:30 p.m.

10 LEGAL PRACTICE TIPS

Developing and Distributing Apps

  • iTunes/Google Play terms of service and developer agreements

  • Your IT folks are going to do it anyway

  • Privacy issues unique to apps

  • Protection measures such as copyrights, patents, and trade secrets

– Jamie N. Nafziger

3:30 – 4:30 p.m.

IP Contract Negotiation in Today’s Market – Strategies and Success Stories

This panel of experts will describe their strategies for working with counterparties in complex IP transactions, in order to achieve superior results for their clients. We’ll also discuss “bad behaviors” and tactics employed by some counterparties, and how to maneuver around them successfully.

– Felicia J. Boyd, Michael R. Cohen, Ada C. Nielsen & Apur R. Patel
– Christopher M. Turoski (moderator)