Law Seminars International Presents

Second Annual Philadelphia Conference on

Mastering Complex Intellectual Property Licensing

Develop a more solid working knowledge of key business and legal factors

May 22 & 23, 2006
Loews Philadelphia Hotel in Philadelphia, PA
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Who Should Attend

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

Why Attend

"In developing this program, our goal was to provide licensing executives and attorneys with an opportunity to develop a more solid working knowledge of the business and legal factors that must be addressed to achieve a mutually beneficial licensing arrangement. A multitude of legal issues can arise in today's complex licensing transactions and the parties must create a well-drafted document to ensure that they will meet their business objectives. The licensing professionals advising on transaction structure and contract terms must understand the nature of the parties' business activities and the business people should have at least a basic understanding of the legal issues. We have assembled a group of leading licensing professionals to discuss the latest developments in the law, licensing strategies, due diligence and effective rights transfer mechanisms, pricing and special issues for technology transfers, transactions involving open source software, and international transactions." ~ Program Co-Chairs: George A. Frank, Ph.D., Esq. and Frederic M. Wilf, Esq.

What You Will Learn

* Preliminary Planning: Making Sure There Will Be a Match Between What You Want To Get Out of the Deal and What You Actually Get * The Critical Issue of Pricing * Special Issues in Information Technology Transactions * Special Issues for Outsourcing Transactions * 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 * Early Stage Technology Companies - Hot Issues, Strategies and Opportunities in Licensing: The Experts Speak * Export Control, Counterproliferation and the Protection of Proprietary Information in Government Hands * Special Terms for International Transactions Involving the Export or Import of Technology * Maximizing the Bottom Line and Receiving Full Value

What Attendees Have Said About Similar Programs

~ A worthwhile event ~ Specific case studies make the discussion lively ~ Very high level

Agenda

Monday, May 22, 2006
8:00 am Registration and Continental Breakfast
8:30 am Introduction & Overview
  George A. Frank, Ph.D., Esq., 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 Preliminary Planning: Making Sure There Will Be a Match Between What You Want To Get Out of the Deal and What You Actually Get
  A structured approach to verifying the licensor's IP rights and litigation status; verifying third-party technology and rights in the subject matter; verifying the other party's financial stability; and resolving issues that are discovered
  Craig H. Evans, Esq., Corporate IP Counsel
 E. I. du Pont de Nemours and Company / Wilmington, DE
9:30 am The Critical Issue of Pricing
  How are litigation royalty rates different from rates negotiated outside of litigation? Is there a "best" pricing methodology for specific types of transactions?
  Kathleen M. Kedrowski, CPA, Director
 LECG, LLC / Chicago, IL
10:15 am Break
10:30 am Special Issues in Information Technology Transactions
  The new version of the GNU General Public License for open source software; digital rights management after Grokster and Sony BMG; licensee liability for use of digital rights management technology when it runs amuck
  Frederic M. Wilf, Esq., Program Co-Chair
 Morgan, Lewis & Bockius LLP / Philadelphia, PA
11:15 am Special Issues for Outsourcing Transactions
  Checklist for necessary clauses; terms for ensuring compliance with privacy, information security, and other regulatory requirements; norms for indemnifications, liabilities, and warranties
  Barbara M. Melby, Esq.
 Morgan, Lewis & Bockius LLP / Philadelphia, PA
12:00 pm Lunch (on your own)
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
3:15 pm Break
3:30 pm Special Issues for Transactions Involving Patents/Technology
  Recent Supreme Court patent cases and what they tell us about the judicial view of IP rights; determining patentable subject matter; permanent injunctions after patentee wins; extent to which a patent conveys direct market power
  George A. Frank, Ph.D., Esq., Program Co-Chair
 Drinker Biddle & Reath LLP / Philadelphia, PA
  Sub-licensing strategies: How to define royalty base; royalty triggering events; parent-subsidiary relationships
  Wendy A. Choi, Esq.
 Woodcock Washburn LLP / Atlanta, GA
5:00 pm End of Day

Tuesday, May 23, 2006
8:00 am Registration and Continental Breakfast
8:30 am The Intersection of Antitrust Law and Intellectual Property Protection
  Case law update: An antitrust lawyer's perspective on which ties are legal and which are illegal; patent misuse and exhaustion
  A. Douglas Melamed, Esq.
 Wilmer Cutler Pickering Hale and Dorr LLP / Washington, DC
  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: Licensing through the Looking Glass
  Why technology transfer deals are structured differently: Altering your perspective in order to negotiate transactions better
  Christopher F. Wright, Esq.
 McCausland, Keen & Buckman / Radnor, PA
10:30 am Break
10:45 am Early Stage Technology Companies - Legal and Business Perspectives on Hot Issues, Strategies and Opportunities in Licensing
  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
  Donald M. Boles, Esq., Senior Vice President & Chief Patent Strategist
 InterDigital Communications Corporation / King Of Prussia, PA
  Mark J. Chandler, MBA, Managing Director
 Invotex Group / Conshohocken, PA
  Zoltan Kerekes, Esq., Managing Partner
 Phoenix IP Ventures / Philadelphia, PA
12:00 pm Lunch (on your own)
1:15 pm Export Control, Counterproliferation, and the Protection of Proprietary Information in Government Hands
  Export control, the Freedom of Information Act and the protection of confidential business information, including examples under the Chemical Weapons Convention and in law enforcement investigations
  Richard H. Burgess, Esq., Consultant
 Newark, DE
2:00 pm Special Terms for International Transactions Involving the Export or Import of Technology
  The European Union: New technology transfer provisions; licensing competition rules; what is different in the Pacific Rim
  Scott J. Fields, Esq., CEO
 National IP Rights Center, LLC / Blue Bell, PA
2:45 pm Break
3:00 pm Maximizing the Bottom Line and Receiving Full Value
  Effective auditing procedures
  Debora R. Stewart, CPA, Managing Director IP Management & Finance Practice
 Invotex Group / Baltimore, MD
  Avoiding problems arising from licensing with troubled companies: Issues related to the interface between intellectual property law and insolvency law
  Gerry J. Elman, Esq.
 Elman Technology Law, P.C. / Swarthmore, PA
4:30 pm Evaluations & Adjourn

Tuition

Regular tuition for this program is $995 with a group rate of $895 each for two or more registrants from the same firm. For government employees, we offer a special rate of $795. For students and people in their job for less than a year, our rate is $497.50. All rates include admission to all seminar sessions, food and beverages at breaks, and all course materials. Make checks payable to Law Seminars International.

Cancellation & Substitution

You may substitute another person at any time. We will refund tuition, less a $50 cancellation fee, if we receive your cancellation by 5:00 p.m. on Tuesday, May 16, 2006. After that time, we will credit your tuition toward attendance at another program or the purchase of a homestudy. There is a $25 cancellation fee for Course Materials orders and $50 for Homestudy orders.

Continuing Education Credits

This program qualifies for 12.5 PA CLE credits. Upon request, we will apply for CLE credits in other states and other types of credits.

Location

The conference will be held at the Loews Philadelphia Hotel at 1200 Market Street in Philadelphia, PA 19107, (215) 627-1200.
More about the Location
Map & Directions

If You Cannot Attend

Our complete Homestudy Course, consisting of a VHS or DVD recording and the written course materials, is available for $1005. 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, joined Drinker Biddle & Realth LLP after serving as Corporate Counsel and IP Group Leader for E. I. du Pont de Nemours and Company. He is Chair of the firm's Licensing and Technology Transfer Practice Team and focuses his transactional and litigation practice on corporate partnering, licensing, and joint ventures involving patent law, chemical technologies, and biotechnology

Frederic M. Wilf, Program Co-Chair, is Of Counsel at Morgan, Lewis & Bockius LLP where he advises intellectual property owners, licensees and users regarding the publication, syndication and distribution of books, software, photographs, graphic arts and other works via traditional and developing channels of commerce. He also arbitrates business, technology and intellectual property disputes.

Barry M. Benjamin, a partner at Pitney Hardin LLP, counsels clients on the development of their advertising and promotion marketing strategies. He negotiates deals ranging from traditional agency-client, co-promotion, tie-in and talent agreements, to web site content license agreements.

Donald M. Boles is a Senior Vice President and Chief Patent Strategist at InterDigital Communications Corporation, which designs, develops and delivers advanced wireless technology platforms. He develops and executes licensing strategies of the patent portfolio and has been integral in expanding it over fifty percent.

Robert S. Bramson is a patent attorney and a principal at Bramson & Pressman. Previously, Mr. Bramson was VP 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 DuPont, involved with licensing and international trade law focused in export control and treaty compliance.

Mark J. Chandler is a Managing Director with Invotex Group's IP Management & Finance practice, which assists clients in managing their intellectual assets. His IP experience includes technology licensing, patent enforcement, and the development of IP partnerships. He leads teams in the development of patent litigation cases, licensing and sale of IP assets, and the formation of new ventures centered on novel technology.

Wendy A. Choi is a partner with Woodcock Washburn LLP, focusing on complex U.S. and international patent prosecution, IP strategy development, client counseling, due diligence, and transactional and licensing matters for clients in the biotech, chemical, pharmaceutical, and medical device sectors. Previously, she served as in-house counsel for the Rohm and Haas Company, Union Camp Corporation, and HP.

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. He represents clients in 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 Corporate IP Counsel at E. I. du Pont de Nemours and Company with over 20 years of IP experience. In addition to representing the DuPont Performance Materials Platform and the DuPont Intellectual Assets and Licensing Business, he manages a group of attorneys counseling these businesses.

Scott J. Fields is the founder and CEO of National IP Rights Center, LLC. He specializes in Internet related IP matters and is the CEO of Internet start-ups, including Feebid.com, IPToolbar.com, and IPFee.com, IPLegaldirectory.com and TMAlert.com.

Glenn A. Gundersen is co-chair of the IP Group at Dechert LLP. He concentrates his practice in the fields of trademark, copyright, licensing, Internet, advertising, and right of publicity law. He was named in "Managing Intellectual Property" magazine's biennial list of "The World's Leading Experts in Trademark Law" and "The International Who's Who of Trademark Lawyers." He also has been designated a leading IP lawyer by "Chambers USA."

Kathleen M. Kedrowski is a Director at LECG, LLC, where she is involved in economic, business and financial analyses in IP, licensing, and other disputes. She also advises clients on the strategic use of intellectual assets such as effective utilization and monetization and strategies throughout the intangible asset life cycle.

Zoltan Kerekes is a co-founder and Managing Partner of Phoenix IP Ventures. He has significant legal and business experience in protecting, enforcing, and deriving value from IP worldwide on behalf of pharmaceutical and biotechnology companies. Previously, he managed the 'Pure IP' portfolio for GlaxoSmithKline Ventures and was a Senior Patent Counsel with GSK.

A. Douglas Melamed is co-chair of the Antitrust and Competition Department at Wilmer Cutler Pickering Hale and Dorr LLP. Previously, he served in the U.S. Department of Justice as Principal Deputy Assistant Attorney General and then as Acting Assistant Attorney General in charge of the Antitrust Division. He has been listed in The Best Lawyers in America, "Who's Who Legal, The International Who's Who of Business Lawyers", and Chambers USA "America's Leading Lawyers for Business".

Barbara M. Melby is in the Emerging Business and Technology Practice at Morgan, Lewis & Bockius LLP. One of the leading outsourcing attorneys in the U.S., she co-authored two of the seminal works in the outsourcing field, Information Technology Outsourcing: Process, Strategies, and Contracts and Business Process Outsourcing: Process, Strategies, and Contracts. In 2005 she was recognized by Chambers as a leading lawyer for business process outsourcing and is listed as a 2006 HRO Superstar, HRO Today.

M. Howard Morse co-chairs the Antitrust Group at Drinker Biddle & Reath LLP. He represents businesses before the FTC, the Department of Justice, and State Attorneys General, in investigations involving mergers, acquisitions and joint ventures as well as alleged monopolization and restraint of trade cases. Previously, he served as Assistant Director of the FTC's Bureau of Competition, where he was responsible for antitrust investigations and litigation.

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

Debora R. Stewart, CPA, is a Managing Director of Invotex Group's IP Management & Finance practice, which assists clients in managing their intellectual assets. She provides strategic assistance and tactical expertise to help clients optimize the value of their IP, primarily in the areas of License Management and Royalty Compliance.

Christopher F. Wright is a shareholder of McCausland, Keen & Buckman, where he handles all aspects of entrepreneurial endeavors with an emphasis on business and IP law. He focuses on growth technology companies, equity investors, and universities and research institutions that license technology. Previously, he served as Associate General Counsel for the University of Pennsylvania and Director of Legal Affairs for Penn's Center for Technology Transfer.