Law Seminars International Presents

A Comprehensive Workshop on

Advanced IP Licensing Transactions

Business and Legal Issues

April 19, 2004
Crowne Plaza Houston Downtown in Houston, TX
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Who Should Order Homestudy

In-house counsel, IP lawyers, CFOs, CPAs, CIOs and technology professionals

Why Order

"Agreements for the licensing of intangible assets involve many unique issues. Business people and attorneys involved in licensing transactions need a solid working knowledge of the business and legal factors that must be dealt with when negotiating license agreements. This workshop convenes the region’s leading licensing professionals to discuss the business and legal issues that arise in licensing transactions, including business and economic perspectives, tax, branding and content clearance implications, international licensing factors and the impact of insolvency of a party." ~ Program Co-Chairs: Gordon T. Arnold, Esq. and Randall E. Colson, Esq.

Agenda

Monday, April 19, 2004
8:30 am Introduction and Overview
  Gordon T. Arnold, Esq., Program Co-Chair
 Arnold & Ferrera, L.L.P. / Houston, TX
  Randall E. Colson, Esq., Program Co-Chair
 Haynes and Boone, LLP / Dallas, TX
8:45 am Strategic Issues in Licensing
  Business issues in licensing transactions; problem areas and things to avoid
  Thomas Phillips, President
 Effective Agreements, Inc, / Richardson, TX
9:15 am The Dance of Negotiation in Complex Licensing Agreements
  Mating porcupines: How to get together and still be able to get apart (considerations in IP ownership in joint ventures)
  Randall E. Colson, Esq., Program Co-Chair
 Haynes and Boone, LLP / Dallas, TX
  Antitrust and misuse issues in complex licensing
  Gordon T. Arnold, Esq., Program Co-Chair
 Arnold & Associates / Houston, TX
10:30 am Break
10:45 am Special Issues for Transactions Involving the Export and Import of Technology
  Technology exports and export controls
  David W. Addis, Esq.
 Covington & Burling / Washington, DC
  Offshore development of technology
  D. C. Toedt, III, Esq., Vice President, General Counsel, and Secretary
 BindView Corporation / Houston, TX
12:00 pm Lunch (on your own)
1:15 pm Patent Issues
  Details to consider if an agreement includes the right to practice or license patents
  Barry L. Grossman, Esq.
 Foley & Lardner LLP / Milwaukee, WI
1:45 pm Trademark and Branding Issues
  Selected Trademark and branding issues in licensing transactions
  Richard Groos, Esq.
 Fulbright & Jaworski LLP / Austin, TX
2:15 pm Content Licensing
  Issues and strategies related to obtaining rights to media and other content
  Joseph W. Looney, Esq.
 Adams and Reese LLP / New Orleans, LA
2:45 pm Special Issues in Software Licensing
  Indemnities; warranties; basic license provisions
  William E. Morlan, Esq.
 King & Spaulding LLP / Atlanta, GA
3:15 pm Break
3:30 pm Maximizing the Bottom Line and Receiving Full Value
  Tax Issues: Tax planning for offshore intellectual property transfers and other sophisticated tax strategies
  Charles R. Goulding, Managing Director
 Cooper Industries, Inc. / Houston, TX
  100 factors involved in pricing the technology license
  Tom Arnold, Esq.
 Howrey Simon Arnold & White, LLP / Houston, TX
  Avoiding problems arising from licensing with a the troubled company: Issues related to the interface between the law of intellectual property and insolvency, and contract drafting tips and traps
  Wayne Kitchens, Esq.
 Hughes Watters & Askanase LLP / Houston, TX
5:30 pm Adjourn

Cancellation

There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders

Continuing Education Credits

Law Seminars International self-certifies CLE credits for Washington, California, and Alaska. For other locations, we automatically seek CLE credit approval for the state in which a seminar is held. On request, we will apply for credits from other bar associations or the accrediting bodies for other professions. The current credits status for this program is TX CLE 7 (#000060150) | CA MCLE 7.25 hrs | GA CLE 7.0 hrs | LA CLE 7 (#5475040419) | NY CLE 8.0 (non-transitional) | WA CLE (#117697) 7.0 hrs.

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $605. The course materials alone are available for $100. We will ship your homestudy order via UPS ground within two weeks after the seminar or the date we receive payment (which ever is later).
Order Homestudy

Faculty Bios

Gordon T. Arnold, Program Co-Chair, of Arnold & Ferrera, L.L.P., is the Attorney in Charge of multiple cases in patents, trade secrets, trademarks and licensing cases, including appeals. He has done extensive licensing work domestically and abroad, dealing with multiple related patents.

Randall E. Colson is the Head of Haynes and Boone, LLP’s technology transactions practice group and has extensive experience in the preparation and negotiation of various licensing, development, distribution, outsourcing and other technology-related agreements.

David W. Addis is Of Counsel with Covington & Burling where his practice encompasses information technology, exports and foreign trade controls, intellectual property licensing and technology transfers, and antitrust counseling. He represents Microsoft for its participation in a wide range of technical standards organizations. He has extensive experience with U.S. foreign trade controls, export regulations and embargo sanctions, and advises on cross-border technology transfers in the computer, software and biotechnology sectors; networking and intranets for multinational operations; and exports of technology related to satellites and defense materials.

Tom Arnold is a one of the founders and is Of Counsel at Howrey Simon Arnold & White, LLP. He has over 30 years of experience in representing clients in virtually every aspect of intellectual property law. He is currently specializing in alternative dispute resolution in cases involving licensing, franchising, and intellectual property.

Charles R. Goulding is a Managing Director at Cooper Industries, Inc. in Houston. Before joining Cooper, he was a Vice President of another similar sized industrial manufacturer. A substantial portion of his career activities relate to intellectual property issues, including brands, patents, trademarks, trade names, software, copyrights, trade secrets and secret formulas.

Richard Groos, a partner at Fulbright & Jaworski L.L.P., has a multi-faceted practice centered on intellectual property law, with a focus on trademark, copyright, Internet, and unfair competition law. Mr. Groos is an active participant in the International Trademark Association presently serving on INTA’s PTO Information Relations Subcommittee.

Barry L. Grossman is a partner in the Milwaukee office of Foley & Lardner. As a member and past leader of the Consumer & Industrial Products Practice Group in the firm's Intellectual Property Department. He is experienced in all areas of patent law, including obtaining, licensing, and litigating patents. Before entering private practice in 1982, he gained extensive experience at the U.S. Patent and Trademark Office as a patent examiner, a legislative and international specialist, and as executive assistant to the Commissioner of Patents and Trademarks.

Wayne Kitchens is a partner at Hughes, Watters & Askanase, LLP where he concentrates his practice on business and commercial law. His experience covers the areas of corporations, securities, partnerships, joint ventures, leveraged buy-outs of corporations and their subsidiaries, and syndications. He is also a published author and frequently speaks at continuing education seminars.

Joseph W. Looney has been engaged in civil law and litigation practice since 1976. He joined Adams and Reese LLP as a partner in 1991 and works in the areas of intellectual property and commercial litigation. Mr. Looney provides service in the areas of patent law, trademarks, trade secrets, technology, computer law and other intellectual property matters.

Bill Morlan practices in King & Spalding's Private Equity Practice Group and Technology Transactions Practice. Mr. Morlan has advised a number of publicly and privately held companies in connection with a wide variety of corporate and technology matters, including various information technology and business process outsourcing transactions. In addition, he has assisted a number of clients in connection with the acquisition, development, marketing and protection of intellectual property assets through merger and acquisition transactions, development agreements, licensing, joint ventures, strategic alliances and other arrangements.

Thomas S. Phillips has over 15 years of experience in mergers and acquisitions, divestitures and strategic alliances. As President of Effective Agreements, Inc., he has built a successful consulting practice with an emphasis on funding efforts, commercial agreements, strategic alliances and mergers and acquisitions.

D. C. Toedt III is Vice President, General Counsel and Secretary for BindView Corporation. Prior to joining the company in 1999, he was a partner and member of the policy committee at Arnold, White & Durkee, one of the nation’s largest intellectual- property law firms (now Howrey Simon Arnold & White) where he served as outside intellectual property and licensing counsel to BindView from the time the company was founded. Mr. Toedt is the author of a one-volume legal treatise, The Law and Business of Computer Software updated annually.