Law Seminars International Presents

The Comprehensive Workshop on

Complex Intellectual Property Licensing

Business and Legal Issues

May 19 & 20, 2005
The Down Town Club in Philadelphia, PA
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Who Should Order Homestudy

In-house counsel, IP lawyers, CFO's, CPA's, CIO's and technology professionals

Why Order

Agreements for the licensing of intangible assets involve many unique issues. Attorneys and executives 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 leading regional and national licensing professionals to discuss the business and legal issues that arise in licensing transactions, including developing licensing strategies, international licensing factors, patent exhaustion, assertive licensing and open source licensing. Program Co-Chairs: George A. Frank, Esq., Ph.D., and Frederic M. Wilf, Esq.

What You Will Learn

Early Stage Technology Companies - Hot Issues, Strategies and Opportunities in Licensing: The Experts Speak; Tips for Effective Working Relationships between the Business People and Legal People on Complex Deals; Trademark, Copyright & E-commerce Related Licensing Transactions; Special Issues for Transactions involving Patents/Technology; The Intersection of Antitrust Law and Intellectual Property Protection; University Technology Transfer and Licensing with Biotechnology and Pharmaceutical Companies; Royalty Rates In and Out of Litigation; Special Terms for International Transactions involving the Export or Import of Technology; Special Issues in Information Technology Transactions; Maximizing the Bottom Line and Receiving Full Value

Agenda

Thursday, May 19, 2005
8:00 am Registration and Continental Breakfast
8:30 am Introduction and Overview
  George A. Frank, Esq., Ph.D., Program Co-Chair
 Drinker Biddle & Reath LLP / Philadelphia, PA
  Frederic M. Wilf, Esq., Program Co-Chair
 Morgan Lewis & Bockius LLP / Philadelphia, PA
8:45 am Tips for Effective Working Relationships between the Business People and Legal People on Complex Deals
  A conversation about the best internal processes and procedures for both licensors and licensees
  George A. Frank, Esq., Ph.D., ,Program Co-Chair, Moderator
 Drinker Biddle & Reath LLP / Philadelphia, PA
  Craig H. Evans, Esq., Corporate IP Counsel
 DuPont / Wilmington, DE
  Barbara M. Melby, Esq.
 Morgan Lewis & Bockius LLP / Philadelphia, PA
10:15 am Break
10:30 am Royalty Rates In and Out of Litigation
  How are litigation royalty rates different from rates negotiated outside of litigation?
  Russell L. Parr, CFA, ASA, President
 Intellectual Property Research Associates, Inc. / Yardley, PA
11:15 am Special Issues in Information Technology Transactions
  Overview of challenges in information technology licensing: Bundling of hardware and software; drafting effective performance specifications for custom systems; free and open source code licenses; using digital rights management to enforce license terms
  Frederic M. Wilf, Esq., Program Co-Chair
 Morgan Lewis & Bockius LLP / Philadelphia, PA
12:00 pm Lunch
1:15 pm Trademark, Copyright & E-commerce Related Licensing Transactions
  Content Licensing: Issues and strategies related to obtaining rights to media and other content
  Glenn A. Gundersen, Esq.
 Dechert LLP / Philadelphia, PA
  Trademarks and Branding: Strategies for maximizing the value of trademarks; terms to include and avoid in trademark licensing agreements
  Joseph J. Serritella, Esq.
 Pepper Hamilton LLP / Philadelphia, PA
  E-commerce and other Internet-related transactions: Unique terms and enforcement strategies for licensing trademarks and copyrighted materials for use on the world wide web
  Barry M. Benjamin, Esq.
 Pitney Hardin LLP / New York, NY
3:00 pm Break
3:15 pm Special Issues for Transactions Involving Patents/Technology & Related Issues
  Sub-licensing strategies: How to define royalty base; royalty triggering events; parent-subsidiary relationships
  Robert M. Conway, Esq.
 Duane Morris LLP / Allentown, PA
  Terms to include for licensee and licensor: Exclusive or non-exclusive; term and termination; infringement abatement; assignability
  George A. Frank, Esq., Ph.D., Program Co-Chair
 Drinker Biddle & Reath LLP / Philadelphia, PA
4:30 pm End of Day

Friday, May 20, 2005
8:00 am Registration and Continental Breakfast
8:30 am The Intersection of Antitrust Law and Intellectual Property Protection
  Antitrust lawyer’s perspective on what ties are legal and illegal; patent misuse and exhaustion
  Gerry J. Elman, Esq.
 Elman Technology Law, P.C. / Swarthmore, PA
  Strategies for structuring transactions to avoid antitrust problems; special issues arising under antitrust: Patent pools
  M. Howard Morse, Esq.
 Drinker Biddle & Reath LLP / Washington, DC
9:45 am University Technology Transfer and Licensing with Biotechnology and Pharmaceutical Companies
  How Bayh-Dole and other federal laws affect licensing terms as part of technology transfer deals; university and licensee perspective on key licensing terms in clinical trial and sponsored research contracts; tips on licensing IP to and from a university
  Robert F. Firestone, Esq., Associate General Counsel
 University of Pennsylvania / Philadelphia, PA
10:30 am Break
10:45 am Early Stage Technology Companies - Hot Issues, Strategies and Opportunities in Licensing: The Experts Speak
  Getting your foot in the prospect's door; CDA obstacles; the right presentation and champion; new IP; leading edge technology problems; the transaction; David negotiates with Goliath; license drafting; international deals; successors; post-execution
  Robert S. Bramson, Esq., Moderator
 Bramson & Pressman / Conshohocken, PA
  James R. Bramson, Esq., Chief Counsel for Intellectual Property and Technology
 America Online, Inc. / Dulles, VA
  Mark J. Chandler, MBA, Vice President and Head of Business Development
 BTG / West Conshohocken, PA
  Osagie O. Imasogie, Esq., Senior Managing Partner
 Phoenix IP Ventures / Philadelphia, PA
12:15 pm Lunch
1:30 pm Special Terms for International Transactions Involving the Export or Import of Technology
  Export control of technology: Freedom of Information Act (FOIA); protections for export control license applications: law enforcement investigations
  Richard H. Burgess, Esq., Consultant
 Newark, DE
  The European Union: New technology transfer licensing competition rules; Pacific Rim
  Scott J. Fields, Esq., CEO
 National IP Rights Center, LLC / Blue Bell, PA
3:00 pm Break
3:15 pm Maximizing the Bottom Line and Receiving Full Value
  Effective auditing procedures
  Debora R. Stewart, CPA, President
 Intellectual Property Management & Finance / Baltimore, MD
  Avoiding problems arising from licensing with troubled companies: Issues related to the interface between intellectual property law and insolvency law
  Martin L. Faigus, Esq.
 Caesar, Rivise, Bernstein, Cohen and Pokotilow, Ltd. / Philadelphia, PA
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: PA CLE 12 | OH CLE 12.25 (#000150346) | NC CLE 12 ( #8) | WI CLE 15

Cost

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $905. The written 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 (whichever is later).
Order Homestudy

Faculty Bios

George A. Frank, Program Co-Chair, is Of Counsel in the Intellectual Property Practice Group and Chair of the Licensing and Technology Transfer Practice Team at Drinker Biddle & Reath LLP. Dr. Frank focuses his practice on domestic and international corporate partnering, licensing and joint ventures involving patent law, chemical technologies and biotechnology as well as related litigation, including patents and products liability. Most recently, he was Corporate Counsel for E. I. du Pont de Nemours and Company where he was Intellectual Property Group Leader.

Frederic M. Wilf, Program Co-Chair, is Of Counsel at Morgan Lewis & Bockius LLP where he practices business, technology and intellectual property law. He speaks and writes extensively on topics involving computer technology and the law. Mr. Wilf is Chair, Cyberspace and Ecommerce Committee, of the Business Law Section of the Philadelphia Bar Association.

James R. Bramson is Chief Counsel for Intellectual Property and Technology for America Online, Inc. He has led: negotiations in over 200 technology transactions, negotiations in the $750M settlement of Netscape v. Microsoft antitrust action; and IP related diligence and negotiations in connection with over 25 mergers and acquisitions, including Time Warner, Netscape and CompuServe.

Robert S. Bramson is a Principal at Bramson & Pressman. He is an engineer and patent attorney and former head of the Computer and Technology law group of Schnader, Harrison, Segal & Lewis. Previously, Mr. Bramson was Vice President and General Patent and Technology Counsel for Unisys, founder and President of InterDigital Patents Corporation, and Licensing Counsel for Abbott Laboratories.

Richard H. Burgess is a consultant focusing his efforts on international licensing, export control, and the Chemical Weapons Convention. Previously, Mr. Burgess was a patent and technology lawyer at General Electric and then DuPont, involved with licensing and international trade law focused in export control and treaty compliance.

Mark J. Chandler is Vice President and Head of Business Development for BTG, a technology investment and development company focused on emerging technologies in the life and physical sciences. He focuses on the development of new ventures, investment in new technology and the formation of partnerships and joint ventures. Mr. Chandler is also a member of the Board of Directors of Primaxis Technology Ventures, Inc.

Robert M. Conway is a partner at Duane Morris LLP, practicing in the area of IP law with emphasis on software and technology licensing and information technology business transactions. Mr. Conway also practices in the areas of commercial contracting, antitrust, mergers/divestitures and computer litigation and has comprehensive experience in the telecommunications, computer and manufacturing industries.

Gerry J. Elman is a patent attorney at Elman Technology Law, P.C. He was a pioneer in developing a legal practice relating to biotechnology, as well as one of the first attorneys to work with computers and online information technology. Mr. Elman represents clients for a variety of intellectual property and business matters including trademarks and proprietary names, licensing, IP rights, the resolution of disputes, the conduct of IP audits, and technology law and trade regulation issues.

Craig H. Evans is a corporate IP counsel with the DuPont with over 20 years of IP experience. In addition to representing the DuPont Performance Materials Platform and the DuPont Intellectual Assets and Licensing Business, Mr. Evans manages a group of attorneys counseling these businesses.

Martin L. Faigus is a partner/shareholder at Caesar, Rivise, Bernstein, Cohen and Pokotilow, Ltd. Mr. Faigus’ practice includes all aspects of IP law, including the preparation and prosecution of both U.S. and International patent and trademark applications. He also focuses on transactional matters and litigation involving patents, trademarks, copyrights, trade secrets and computer and Internet law.

Scott J. Fields is the founder and CEO of National IP Rights Center, LLC. He most recently began and headed up the IP practice at Obermayer Rebmann Maxwell & Hippel LLP. Mr. Fields represents major Internet clients. He has prepared and prosecuted Internet and business method patents and prepared agreements in e-commerce as well as handled domain and trademark disputes. He is the CEO of several Internet start-ups, including Feebid.com, IPToolbar.com, and IPFee.com, IPLegaldirectory.com and TMAlert.com.

Robert F. Firestone is Associate General Counsel at the University of Pennsylvania, concentrating his practice on IP, research, technology contracting, and general contract and commercial law matters. He works closely with the Center for Technology Transfer, with the Office of Research Services, and with initiatives to grow relationships with industry and government entities through ventures and affiliations.

Glenn A. Gundersen, a partner at Dechert LLP, is co-chair of the Intellectual Property Group. Mr. Gundersen 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.

Osagie O. Imasogie is Senior Managing Partner of Phoenix IP Ventures. Prior to that, Mr. Imasogie was the founder of Trigenesis Therapeutics, Inc. a biopharmaceutical company focused on developing products for dermatological indications, which he successfully sold to a larger, publicly traded company as the basis of that company’s entry into the Specialist Pharmaceutical business.

Barbara M. Melby is a partner at Morgan Lewis & Bockius LLP in the Emerging Business and Technology Practice. Ms. Melby’s practice focuses primarily on technology-related transactions, including information technology and business process outsourcing, licensing and hosting agreements, technology services, joint ventures and strategic alliances.

M. Howard Morse is a partner at Drinker Biddle & Reath LLP and a head of the Antitrust Group. Prior to joining the firm in 1998, Mr. Morse served as assistant director of the Federal Trade Commission’s Bureau of Competition, where he was responsible for merger investigations and litigation in a broad range of industries.

Russell L. Parr, President of Intellectual Property Research Associates, Inc., concentrates on determining the value of IP and the development of comprehensive methods for accurately defining it. Mr. Parr has completed complex consulting assignments involving the valuation and pricing of patents, trademarks, copyrights and other intangible assets. He also conducts customized research into industry specific factors that drive royalty rates.

Joseph J. Serritella is a partner in the litigation department of Pepper Hamilton LLP, focusing on intellectual property-intensive businesses, particularly in computer science, marketing and advertising. Mr. Serritella’s practice includes copyright, trademark, patent, trade secret and unfair competition matters, as well as the law of defamation and free speech.

Debora R. Stewart is the President and a co-founder of Intellectual Property Management & Finance. Their services include: full management responsibilities of its clients’ licenses, a proprietary license selection matrix to identify licenses that may not be in compliance with their agreement terms, royalty audits, license valuations, and royalty financing options.