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An Advanced Comprehensive Conference on Current Issues for

IP & Technology Licensing

Adapting licensing approaches and terms to technological advances

Presented on October 24 & 25, 2019

Seattle, WA

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Program Overview

Who Should Order

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

Why You will Benefit from the Replay

This is an exciting time to be active in the technology licensing world due to the rapidly evolving products, services, and business models. We'll start this year's program with an overview of essential terms to provide a structural context for the discussions to follow.

One challenge for licensing cutting edge technologies is to anticipate new issues that may arise. We'll have a case study of licensing for virtual reality/augmented reality as an illustration of how technological evolution is affecting licensing.

We'll then highlight specific issues including compulsory licensing for technological interoperability; cloud computing; copyright for machine-generated content; and open source licensing. There has been an explosion of products and services using blockchain technologies. Those don't easily fit into traditional licensing models, so we'll discuss alternative approaches to protecting your intellectual property.

We'll keep the momentum up for the second day by addressing trademark licensing and licensing in a joint development context. The trade war with China is a huge issue and you'll have a chance to hear from two China experts on the implications for business transactions involving that country.

An important skill for effective licensing is to find ways to work out the thorny issues. We hope you'll join us for both the substantive updates and the practical tips from our concluding panel discussion.

~ Ramsey M. Al-Salam, Esq. of Perkins Coie and Ned Locke, Esq. of Microsoft Corporation, Program Co-Chairs

What You Will Learn

  • Current essential terms for a licensing agreement
  • How technological evolution is affecting licensing
  • Compulsory licensing terms for technological interoperability
  • Terms for cloud service access agreements
  • "Edge" and Internet of Things (IoT) licensing
  • Licensing involving AI, machine learning, and copyright
  • Open Source licensing
  • Approaches for protecting blockchain products/services
  • Assigning and licensing trademarks
  • International licensing with China
  • Licensing in the joint development context
  • Enforcement and damages case law
  • Tips for resolving the thorniest issues

What Attendees Said

  • 'It was very helpful to have a structure of the big picture before hearing from people with specialized niches.'
  • "Excellent conference. Very informative and well run. I am very glad I attended."
  • "I enjoyed the two-day seminar. It was interesting, well-run, and in comfortable surroundings. I hope to work with you again."
  • "Second day was even better than the first. Really enjoyed all speakers. Top notch and very friendly."

Agenda Day 1

8:30 am

Registration Opens

9:00 am

Introduction & Overview

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

Ned Locke, Esq. , Program Co-Chair, Senior Attorney, Cloud & Artificial Intelligence
Microsoft / Redmond, WA

9:15 am

Anatomy of a Licensing Agreement: Essential Terms

Choice of law, indemnity clauses; exclusivity; burden of enforcement for exclusive licenses; enforcement stage choice of forum; considerations for choice of law; dispute resolution terms including mediation and arbitration clauses

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

10:15 am


10:30 am

How Technological Evolution is Affecting Licensing

Responding to new technologies: Case study of best licensing practices for virtual reality/augmented reality (VR/AR); tips for ensuring that you effectively address potential issues arising from the characteristics of new technologies

Jeremy Snodgrass, Esq. , Associate General Counsel
Facebook Inc / Redmond, WA

11:15 am

Technological Interoperability: 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

12:00 pm

Lunch (on your own)

1:15 pm

Licenses for Cloud Computing

Vendor and buyer perspectives on cloud service access agreements vs. more traditional license agreements

Leslie Boyd, Esq. , Associate General Counsel
DomainTools / Seattle, WA

Daniel Goldberg, Esq.
Frankfurt Kurnit Klein & Selz / Los Angeles, CA

2:00 pm

Adapting to Code Moving from the Cloud Back to the Customer's Premises: "Edge" and Internet of Things (IoT) Licensing

New trends in "Edge" computing with an emphasis on Internet-of-Things devices and services; best licensing practices for these solutions

Wendy R. Kearns, Esq.
Davis Wright Tremaine / Seattle, WA

2:45 pm


3:00 pm

Licensing Involving AI, Machine Learning, and Copyright

Copyright ownership of AI created work; recent cases regarding fair use; licensing issues arising from the use of data and proprietary information/know-how for use as building blocks for machine learning to "train" AI

Lisa T. Oratz, Esq.
Perkins Coie / Seattle, WA

3:45 pm

Open Source Licensing

Tips for using open source components to get a project (a) done, (b) right, and (c) on time, without having to pick two out of three

Justin C. Colannino, Esq. , Open Source & Standards Attorney
Microsoft / Boston, MA

4:30 pm

Blockchain: Approaches for Protecting IP and Deploying Blockchain Products or Services

Not easy to fit into traditional licensing models: What are the best approaches to take?

Adam L.K. Philipp, Esq.
AEON Law / Seattle, WA

5:00 pm

Continue the Exchange of Ideas: Reception for Faculty and Attendees

Sponsored by Perkins Coie

Friday, October 25, 2019

9:00 am

Assigning and Licensing Trademarks

Recent cases on the need to transfer good will and police the quality of goods sold under a license; effective licensing terms for monitoring compliance and anticipating the possiblity that one of the parties will become insolvent

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

9:30 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 negotiations; IP enforcement statutory changes, administrative enforcement, and increased damages awarded by courts

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

10:30 am


10:45 am

Licensing in the Joint Venture Context

Structuring collaboration agreements to anticipate issues arising from jointly owned assets: Asset ownership; duties to account to the other party; terms to minimize post-development disputes; additional complexities for international collaborations

Steven B. Winters, Esq.
Lane Powell / Seattle, WA

11:30 am

Update on Recent Licensing Enforcement and Damage Recovery Cases

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

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

12:15 pm

Lunch (on your own)

1:30 pm

Current Thorniest Issues in Licensing and Tips for Resolving Them

Best practices for identifying and dealing with the issues where you may experience the most pushback: What does an in-house counsel need to know?

Steven B. Winters, Esq.
Lane Powell / Seattle, WA

Jesse Kindra, Esq. , Contracts Team Manager
University of Washington / Seattle, WA

Jessica Nguyen, Esq. , General Counsel
PayScale Inc / Seattle, WA

Hillery L. Nye, Esq.
Attorney at Law / Seattle, WA

3:30 pm

Evaluations and Adjourn

Faculty Bios

Ramsey M. Al-Salam, Ramsey M. Al-Salam, Program Co-Chair, is a Partner at Perkins Coie. He has been litigating intellectual property disputes for decades, with a particular emphasis on patent, trade secret and trademark cases.

Ned Locke, Ned Locke, Program Co-Chair, is Senior Attorney for Cloud & Artificial Intelligence at Microsoft. He serves as Microsoft's lead lawyer for enterprise cloud data services, and the Azure cloud computing platform.

Leslie Boyd Leslie Boyd is Associate General Counsel for DomainTools, which focuses on technology to turn domain and DNS data into threat intelligence for tracking down cyber attackers.

Justin C. Colannino Justin C. Colannino is Open Source & Standards Attorney for Microsoft. He is part of a team that oversees processes to enable open source engagement at massive scale.

T. Andrew Culbert T. Andrew Culbert is a partner at Perkins Coie. His trial legacy includes litigating cases that redefined the law of patent damages as well as a case that formulated the basic methodology for valuation of standard-essential patents.

Daniel Goldberg Daniel Goldberg is Counsel to the Privacy & Data Security Group at Frankfurt Kurnit Klein & Selz and a leader in Ad Tech. He is at the forefront of privacy and data security law, including the EU General Data Protection Regulation and the new California Consumer Privacy Act.

Ping Gu Ping Gu is a Partner at the Zhong Lun Law Firm. She helps clients with IP enforcement in China and negotiation of joint-venture contracts, technology transfer/licensing agreements, and standard-related agreements.

Daniel P. Harris, Daniel P. Harris, Harris Bricken, is internationally regarded as a leading authority on legal matters related to doing business in China and in other emerging economies in Asia.

Wendy R. Kearns Wendy R. Kearns is a Partner at Davis Wright Tremaine. She began work in the technology industry in Silicon Valley as a software developer and software product manager. She now focuses on complex technology transactions.

Jesse Kindra Jesse Kindra is the Contracts Team Manager in the Office of Sponsored Programs at the University of Washington. His team negotiates clinical trial and clinical study agreements, industry contracts, government contracts, and collaborative research agreements.

Jessica Nguyen Jessica Nguyen is General Counsel at PayScale, Inc. where she has the challenge of building, from the ground up, a legal department for a high growth tech company.

Hillery L. Nye, Hillery L. Nye, Attorney at Law, has acted as in-house and outside corporate counsel for a variety of technology companies. She also teaches privacy law as an Adjunct Professor at Seattle University School of Law.

Lisa T. Oratz Lisa T. Oratz is Senior Counsel at Perkins Coie. She works with many internet, digital media, AR/VR, and traditional companies on a broad range of topics.

Adam L.K. Philipp Adam L.K. Philipp is the Founder of AEON Law. His patent, trademark and trade secret experience includes computer security, cryptography, blockchain, and distributed object oriented programming.

Jerry A. Riedinger Jerry A. Riedinger is a Partner at Perkins Coie. He focuses his practice on patent infringement, trade secret and complex intellectual property litigation in cases involving over 120 technologies.

Jeremy Snodgrass Jeremy Snodgrass is Associate General Counsel at Facebook Inc. He supports Facebook's AR/VR organization.

Steve Tapia Steve Tapia is Distinguished Practitioner in Residence at Seattle University School of Law. He most recently served as in-house counsel for DIRECTV Sports Networks.

Steven B. Winters Steven B. Winters is a Shareholder at Lane Powell. He is recognized as one of North America's leading practitioners handling complex intellectual property-based transactions representing innovative startups and larger companies.

Mark Wittow Mark Wittow is a Partner at K&L Gates and practice group coordinator for the firm's technology and data protection practice group. He has has served as a special assistant attorney general for the attorneys general of Alaska, Oregon and Washington in technology development matters.

Continuing Education Credits

Live credits: This program qualifies for 11.0 Washington MCLE credits. Upon request, we will apply for, or help you apply for, CLE credits in other states and other types of credits.