Law Seminars International Presents

A One-Day Workshop on

Advanced Multinational IP Licensing

October 15, 2004
Sheraton Reston Hotel in Reston, VA
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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, especially when the license is on a cross border basis. 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 international license agreements. This workshop convenes leading national and international licensing professionals to discuss the business and legal issues that arise in licensing transactions, including business and economic perspectives, (removed tax) branding and content clearance implications, international licensing factors and the impact of insolvency of a party.

What You Will Learn

- Strategic Issues in International Licensing - Overseas Perspectives: Overview of Key Foreign Intellectual Property Laws - The Dance of Negotiation in Complex International Licensing Transactions - Special Issues for Transactions Involving the Export and Import of Technology - Trademark and Branding Issues - Patent Issues - Copyrights and Content Licensing - Addressing Potential Problems and the Best Approaches for Avoiding Them

What Attendees Said

- "Most of this information I can use in my day-to-day in-house work." - "Very practical and relevant." - "Excellent overview/introduction, and the presentations were wonderful." - "Excellent program."

Agenda

Friday, October 15, 2004
8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  Ben Goodger, Esq., Head of China Business
 Rouse & Co. International / Shanghai, China, China
  Susan Neuberger Weller, Esq.
 Mintz Levin Cohn Ferris Glovsky & Popeo PC / Reston, VA
8:45 am Strategic Issues in International Licensing
  Business issues in international licensing transactions; problem areas and things to avoid
  Edward M. Chait, Ph.D., CEO
 Spectral Genomics, Inc / Houston, TX
9:15 am Overseas Perspectives: Overview of Key Foreign Intellectual Property Laws
  European Union: Effect of the new European exemption regulations on litigation in Europe
  William K. Wells, Esq.
 Kenyon & Kenyon / Washington, DC
  Asia: Strategies for preventing IP leakage when licensing to China and other Asian countries
  Ben Goodger, Esq., Program Co-chair
 Rouse & Co. International / Shanghai, China, China
10:30 am Break
10:45 am The Dance of Negotiation in Complex International Licensing Transactions
  Domestic perspective for transactions going beyond the simple exchange of a license for cash; foreign perspectives on technology acquisition/outsourcing agreements involving multiple verticals of Intellectual Property; etc
  Glenn A. Gundersen, Esq.
 Dechert LLP / Philadelphia, PA
  Foreign perspective for transactions going beyond the simple exchange of a license for cash; foreign perspectives on technology acquisition/outsourcing agreements involving multiple verticals of Intellectual Property; etc
  Sheldon Burshtein, Esq.
 Blake, Cassels & Graydon LLP / Toronto, ON Canada
12:00 pm Lunch (on your own)
1:15 pm Special Issues for Transactions Involving the Export and Import of Technology
  Technology exports and export controls
  Cynthia J. Larose, Esq., Member
 Mintz Levin Cohn Ferris Glovsky and Popeo PC / Boston, MA
  Offshore Development of Technology
  Raymond Van Dyke, Esq.
 Nixon Peabody LLP / Washington, DC
2:15 pm Trademark and Branding Issues
  Selected trademark and branding issues in licensing transactions
  Joan L. Dillon, Esq.
 Joan Dillon Law, LLC / Atlanta, GA
2:45 pm Break
3:00 pm Patent Issues
  Details to consider if an agreement includes the right to practice or license patents
  Shu Lee, Ph.D., Esq., Chief Patent Counsel
 OSI Pharmaceuticals, Inc. / Melville, NY
3:30 pm Copyrights and Content Licensing
  Special international issues for transactions involving the Internet, web sites, new media, and other content
  Gary S. Morris, Esq., Partner
 Kenyon & Kenyon / Washington, DC
4:00 pm Addressing Potential Problems and the Best Approaches for Avoiding Them
  Avoiding problems arising from Licensing with a troubled company: Issues related to the interface between the law of intellectual property and insolvency, and contract drafting tips and traps
  Michael A. Epstein, Esq., Partner
 Weil Gotshal & Manges LLP / New York, NY
4:30 pm Adjourn

Cancellation

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

Continuing Education Credits

Law Seminars International automatically obtains CLE credit approval for the state in which a seminar is held. On request, we will apply for CLE credits in other states and other types of credits. Current credits status: VA CLE 5.5 (#RO4032) | CA MCLE 6.25 | GA CLE 6 | NC CLE 6 (#10) | NH CLE 6 (#002186) | NY CLE 7 (no ethics, non-transitional) PA CLE 6 | WA CLE 6 (#124446)

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

Ben Goodger, Program Co-Chair, is an Executive of Rouse & Co. International, the international IP legal consultancy. He re-located from the UK to the Shanghai office in August 2002 and now manages the firm’s China business and its Asia Commercial Intellectual Property Group. His practice can be split into three main areas: "hi-tech" (biotechnology, technology transfer, patents); trade mark protection/brand management (with particular emphasis on the food and drink industries); and computers and internet-related law.

Susan Neuberger Weller, Program Co-Chair, is a member in Mintz Levin Cohn Ferris Glovsky and Popeo PC’s Reston office, and manages the firm’s trademark practice. Her practice involves all aspects of intellectual property and related corporate business transactions, with a particular emphasis on domestic and international trademark and copyright searching, prosecution, enforcement, counseling, and litigation.

Sheldon Burshtein, a partner at Blake Cassels & Graydon LLP, practices in the Information & Technology Groups in the Toronto office. His practice emphasizes commercial transactions and he is involved in all aspects of the clearance, acquisition, enforcement and exploitation of patents, trademarks, copyright, designs and other forms of intellectual property.

Edward M. Chait is the CEO of Spectral Genomics, Inc. Prior to joining Spectral, he was CEO of PharmaCore, Inc. a molecular drug discovery company. Dr. Chait began his career at Du Pont where he became Director of Licensing and Acquisition for the Biotechnology and Diagnostic division of the company.

Joan L. Dillon, of Joan Dillon Law, LLC, has specialized in the practice of trademark and copyright law and related areas of practice for over 35 years. She is, and has been listed in The Best Lawyers in America, Atlanta Magazine's "Best Lawyers," and Legal Media Group’s Guide to the World’s Leading Trade Mark Practitioners 2004.  She served for 18 years, as in-house trademark counsel to three Fortune 500 companies, and was principal trademark counsel to both the Los Angeles Olympic Committee and the Atlanta Committee for the Olympic Games.

Glenn A. Gundersen, a partner at Dechert LLP, is Co-chair of the Intellectual Property Group. With over 20 years at Dechert, he concentrates his practice in the fields of trademark, copyright, licensing, Internet, advertising, and right of publicity law providing advice to both U.S. and international clients.

Cynthia J. Larose is a Member in the Boston office of Mintz Levin Cohn Ferris Glovsky and Popeo PC and practices in the Business and Finance section representing companies in information, communications and technology. In addition to corporate and finance issues, she particularly counsels clients in areas where intellectual property or intangible property is the primary asset.

Shu Lee is Patent Counsel at OSI Pharmaceuticals, Inc. a company focused on Oncology. He previously worked as a chemist for 18 years and then joined the Morrison Law firm; Fitzpatrick, Cella, Harper, and Scinto; and Merck & Co.

Gary S. Morris specializes in the fields of digital rights management, new media copyright law and licensing. He counsels both large and small new media companies and develops intellectual property strategies that allocate distribution and reproduction rights for electronic content across the supply chain. He also specializes in the development and exploitation of patent rights in technologies that implement rights allocation strategies.

Raymond Van Dyke, a partner in the Washington, D.C. office of Nixon Peabody LLP, focuses his practice in technology and intellectual property counseling, procurement, licensing, and litigation in federal courts and the U.S. International Trade Commission. He represents companies and universities in the biotechnology, pharmaceutical, medical, chemical, software, financial services, telecommunications, Internet, and digital industries, both domestic and international, and in emerging and converging areas, such as bioinformatics, nanotechnology, proteomics, and computational analysis.

William Wells is a partner in Kenyon & Kenyon's Washington DC office. He has responsible for several major US and foreign client's patent, trademark and copyright portfolios, and for establishing a proprietory position in the US and overseas. Most activity relates to utility and design patents. Significant litigation includes a landmark misuse and license case decided by the U.S. Supreme Court. He appears in various U.S. Federal Courts and the International Trade Commission.