Law Seminars International Presents:

An Advanced Conference on Current Dealmaking Trends for

IP and Technology Licensing

Tips for efficiently and effectively monetizing intellectual property

August 23 & 24, 2018

Seattle, WA
(or anyplace you may be via webcast!)

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Program Overview

Who Should Order

Attorneys, business executives, licensing professionals, and others involved with complex licensing transactions

Why You Should Order

Licenses are one way of bringing intellectual property to life. Without licenses, IP rights lay dormant until weaponized in court. Licenses allow IP to be commercialized, accessed and harmonized without resorting to aggressive enforcement. In today's climate of constant change and tighter budgets, the ability to spot, craft, draft and negotiate license agreements efficiently and effectively is more important than ever for licensors and licensees

This conference provides insights on developing issues arising from drafting and negotiating licenses, updates on case law, changes in technologies that impact licensing, and the rise of new international players in IP licensing.

Join our distinguished faculty as they address the above and additional licensing issues from both outside counsel and in-house perspectives including a panel on problematic clauses and what to do about them.

~ Adam L.K. Philipp, Esq. of AEON Law and Ramsey M. Al-Salam, Esq. of Perkins Coie, Program Co-Chairs

What You Will Learn

  • ~ The anatomy of an effective license agreement
  • ~ NDAs as the courting phase of the licensing relationship
  • ~ Case law update: Recent cases impacting IP licensing values
  • ~ Assigning and licensing trademarks
  • ~ Biopharmaceutical trends including licensing for joint ventures and as a result of collaborative activities
  • ~ Compulsory licensing, Standard Setting Organizations, and FRAND
  • ~ Managing compliance
  • ~ International licensing with China
  • ~ Provisions for resolving licensing disputes
  • ~ Wrap-up: Mock negotiation of a hypothetical licensing agreement

What Attendees Said

  • "Second day was even better than the first. Really enjoyed all speakers. Top notch and very friendly."
  • "It was a well-organized seminar, and the concluding licensing discussion in particular I thought was very helpful." Peter Harvey
  • "I thought it was really done at a very high level." Jeffrey A. Greenbaum
  • "Excellent conference. Very informative and well run. I am very glad I attended."

Agenda Day 1

8:30 am

Registration Opens

9:00 am

Introduction & Overview

Adam L.K. Philipp, Esq. , Program Co-Chair
AEON Law / Seattle, WA

Ramsey M. Al-Salam, Esq. , Program Co-Chair
Perkins Coie / Seattle, WA

9:15 am

The Anatomy of an Effective License Agreement

Core essential terms, including exclusivity, lump sum versus sales-based royalties, royalty bases and rates, exclusions, standard forms and provisions, warranties, indemnities, audit rights, keeping IP from competitors, "poison pill" provisions

Steve Tapia, Esq. , Distinguished Practitioner in Residence
Seattle University School of Law / Seattle, WA

10:15 am


10:30 am

NDAs as the Courting Phase of the Licensing Relationship

The structure and essential terms of non-disclosure agreements; the "new world" of NDAs and how they affect high tech joint ventures; lessons from the Waymo/Uber dispute about protecting trade secrets

Adam L.K. Philipp, Esq. , Program Co-Chair
AEON Law / Seattle, WA

11:15 am

Case Law Update: Recent Cases Impacting IP Licensing Values

An update on how recent decisions affect the value of IP rights and the enforceability of licensing agreements

Ramsey M. Al-Salam, Esq. , Program Co-Chair
Perkins Coie / Seattle, WA

12:00 pm

Lunch (on your own)

1:15 pm

Assigning and Licensing Trademarks

The need to transfer good will and police the quality of goods sold under a license; the ability of bankrupt licensors to extinguish licensee rights and the impact on pre-bankruptcy negotiations when relations are strained; unique cannabis issues

Jerry A. Riedinger, Esq.
Perkins Coie / Seattle, WA

2:00 pm

Biopharmaceutical Licensing

Transactional trends including licensing for joint ventures and as a result of collaborative activities

Gary M. Myles, Esq. , President & CEO
Myles Intellectual Property Law / Issaquah, WA

2:45 pm


3:00 pm

Managing Compliance

Structuring an effective process for counting royalties, tracking work product, regulatory compliance, patent marking, trademark quality control, audit rights, verifying "best efforts", "most favored" clauses, and anticipating other issues

Neil Zoltowski , Partner
StoneTurn Group / San Francisco, CA

Viresh Chana , Founder/ CEO, Partner
RUVIXX, Connor Consulting / San Francisco, CA

4:15 pm

Compulsory Licensing, Standard Setting Organizations, and FRAND

When you have no choice: Where compulsory licensing comes into play including when it's "necessary" to practice a standard

T. Andrew Culbert, Esq.
Perkins Coie / Seattle, WA

5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by AEON Law and Perkins Coie

Friday, August 24, 2018

9:00 am

International Licensing: Adapting to Recent Developments in China

An enforceable contract as a starting point: Classic pitfalls that foreigners fall into when dealing with Chinese entities, like drafting in English, and other key considerations

Daniel P. Harris, Esq.
Harris Bricken / Seattle, WA

New rules on IP transfers; importing & exporting technology; potential impacts from recent trade negotiation; IP enforcement statutory changes, administrative enforcement, and increased damages awarded by courts

Ping Gu, Esq.
Zhong Lun Law Firm / Beijing, China

10:15 am


10:30 am

Provisions for Resolving Licensing Disputes

Choice of resolution technique in the license and choice of technique when enforcing the license: substantive and procedural considerations for choice of law; mediation and arbitration clauses; enforcement stage choice of forum

Mark Wittow, Esq.
K&L Gates / Seattle, WA

11:15 am

Wrap-Up: Mock Negotiation of a Hypothetical Licensing Agreement

Licensee perspective

Jeff Harmes, Esq.
Karcher Harmes / Bainbridge Island, WA

Licensor perspective

Hillery L. Nye, Esq. , General Counsel
Zipwhip / Seattle, WA

12:30 pm

Evaluations and Adjourn

Faculty Bios

Ramsey M. Al-Salam, Ramsey M. Al-Salam, Program Co-Chair, is a partner at Perkins Coie. He focuses on intellectual property litigation, with a particular emphasis on patent litigation.

Adam L.K. Philipp, Adam L.K. Philipp, Program Co-Chair, is the founder of AEON Law and head of the firm's patent department. He also counsels clients on intellectual property portfolio strategies and infringement matters.

Viresh Chana is the Founder/CEO at RUVIXX and also a partner in Connor Consulting Corporation. He has over 20 years of experience in the technology, semiconductor, and consumer electronics industries. He has managed hundreds of IP-related audits and has helped numerous companies collect lost revenue and improve their control environment and licensee base relationships.

T. Andrew Culbert T. Andrew Culbert is a partner at Perkins Coie and a former Associate General Counsel in Microsoft Corporation's Litigation Department where he served as the head of Microsoft's worldwide intellectual property litigation docket.

Ping Gu Ping Gu is an equity partner at the Zhong Lun Law Firm. She is a Chambers Global ranked IP Lawyer and an AsiaLaw Leading Lawyer in China.

Jeff Harmes Jeff Harmes of Karcher Harmes concentrates his practice on business law, including commercialization of intellectual property, distribution and procurement contracts, business alliances, outsourcing, and privacy.

Daniel P. Harris Daniel P. Harris of Harris Bricken is a leading authority on legal matters related to doing business in China and in other emerging economies in Asia. Dan writes and speaks extensively on Chinese law with a focus on protecting foreign businesses in their China operations. Dan is also the co-editor of the China Law Blog.

Gary M. Myles Gary M. Myles is President & CEO Myles Intellectual Property Law where he drafts and prosecutes patent applications for a broad range of life sciences inventions.

Hillery L. Nye is General Counsel at Zipwhip where she provides strategic counsel, privacy guidance and day to day operational support.

Jerry A. Riedinger Jerry A. Riedinger is a partner at Perkins Coie where he focuses his practice on patent infringement, trade secret and complex intellectual property litigation.

Steve Tapia Steve Tapia is a Distinguished Practitioner in Residence at Seattle University School of Law. He previously practiced entertainment, media and intellectual property law.

Mark Wittow Mark Wittow is a partner at K&L Gates. His work focuses on intellectual property and technology transactions plus electronic commerce, data privacy and data protection issues.

Neil Zoltowski Neil Zoltowski is a Partner at StoneTurn Group LLP where he serves as a consulting and testifying financial expert in complex business disputes, intellectual property litigation, and business and intellectual property valuation matters.

Continuing Education Credits

Live credits: This program qualifies for 9.25 Washington MCLE credits. Upon request, we will apply for, or help you apply for, CLE credits in other states and other types of credits.

Replay Options

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Audio Podcasts are perfect for making more effective use of the time you spend commuting.

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