Intellectual Property (IP) Licensing

A minimum 3 of 5 Online Primers must be viewed for the Certificate. You will have access to all 5 Online Primers On Demand.

We recommend that you view the Online Primers before Module 1.

Successful licensing requires sound knowledge of the principles defining various IP rights. These 5 Online Primers (1‑hour each) focus on the key elements likely to be at issue in any licensing situation. View anytime online.

Topics include:

• Key Patent Concepts
• The Elements of Trademarks
• The Essentials of Copyright
• Trade Secrets and Confidential Information
• Industrial Designs

Drafting Assignment: Distribution
The drafting assignment completed between program modules will be distributed and discussed in Module 1. This assignment is expected to take about 3-4 hours to complete. It will be discussed again briefly during Modules 2 and 3, and it will be due the week after Module 3.

Identifying Underlying IP and Chain of Title Issues
Develop a sound approach to your IP licensing transaction, including an essential checklist to determine the precise nature, scope, validity, and ownership of the subject IP.

The License Grant and Scope of Use Clauses: Critical Considerations at the Core of Your Agreement
Regardless of IP type, your negotiating and drafting will focus on the scope of the license and the precise extent of the license grant. Expert faculty will guide you through the parameters of the grant and scope of license, with specific sessions focusing on issues unique to each IP type.

Common Words and Phrases in License Agreements and How a Judge Reads a Contract
This session considers drafting terminology in licenses for patents, copyright, trade-secrets, trademarks, and industrial designs. You will learn how to identify and eliminate unwanted ambiguity in your licenses, and how to avoid common pitfalls and mistakes. We will also look at how judges frequently interpret these documents.

Drafting Assignment: Discussion/Q&A
You will have the chance to clarify your questions about the drafting assignment. This assignment is expected to take about 3-4 hours to complete. It will be discussed again briefly during Module 3, and it will be due the week after Module 3.

Representations and Warranties in the License Agreement
A practical session on the do’s and dont’s of reps and warranties. Highly experienced counsel will share tips on getting the best possible protection and ensuring you don’t promise what you cannot give or miss an opportunity for fulsome disclosure.

Royalty, Payment and Audit Terms
Negotiating payment terms for the use of IP is complex. Licensors want to receive the compensation they expect and licensees don’t want to overpay. This session will guide you through the various nuances.

Demonstration: Negotiating and Drafting the License Grant and Scope of Use Clauses
Utilizing samples from various types of licensing arrangements, the faculty will demonstrate and discuss negotiation approaches and specific language examples for the license grant and scope clauses.

Indemnities and Other Remedies: Constructing the Safety Net

• Risk allocation: what’s fair, what’s achievable
• Indemnity for breach of contract, personal injury, and negligence
• Use and abuse of liquidated damage clauses
• Tips on using or refusing specified remedies

International Licensing: Key Issues
Many IP licenses involve foreign entities and IP. Learn key issues when licensing with other jurisdictions, including:

• Significance of choice of law, forum, and choice of venue
• Overview of “need to know” cross-border issues
• Regulatory restrictions and traps
• Impacts of different IP laws, competition laws, export controls, and sanctions

IP Strategy
Focusing on 3 key strategic issues: freedom to operate; ability to design/create around, and strength of the rights

• Non-practicing entities: trolls or defenders of justice?
• Role of complementary assets
• Difficult decisions around prior art searching
• Filing strategies

Drafting Assignment Final Discussion and Deadline
The drafting assignment will be due the week after Module 3.

Demonstration: Negotiating and Drafting Indemnities
Faculty will demonstrate licensee/licensor perspectives in negotiating indemnities clauses, linking interests to specific language and highlighting drafting pitfalls. Includes precedents.

The Impact of Insolvency on the License Agreement

• Main types of insolvency proceedings
• Why contractual rights are no longer sacred: disclaimers and involuntary assignments
• The new statutory duty of good faith
• A quick primer on U.S. insolvency principles
• Best practices to minimize potential harm

Negotiating Techniques

• BATNA, ZOPA, and other key negotiation concepts
• Positional vs. win-win negotiating
• Negotiating processes and approaches
• Key attributes of a successful negotiator

Despite All Best Intentions: Renegotiation and Dispute Resolution

• How to decide whether and when to renegotiate
• Assessing leverage and tips to “pre-load” leverage
• Alternatives to standard dispute resolution
• Critical information you need to support renegotiations
• ADR/Mediation/Arbitration

Term, Termination and Renewal of the License

• Determining the term of license
• Implied termination or renewal rights
• Termination mechanisms where there is a breach
• Winding-down provisions

Consulting Agreements

• Default IP ownership for consulting projects
• Resolving the consultant-client tug-of-war over IP
• Evolving business models for consultants

Note: Due to the interactive nature of this workshop, live online attendance is required for this module. This module will not be recorded.

In module 4, you will apply what you’ve learned and reinforce key concepts gained throughout the Certificate by working in interactive, small group workshops, and you will observe an Advanced Negotiation Techniques presentation.

DRAFTING WORKSHOP AND ASSIGNMENT REVIEW: Scope of License Grant and Termination
In small groups, you will get personalized feedback on your drafting assignment from our expert faculty and discuss common drafting errors and model drafting clauses.

Instructional Session: Advanced Negotiation Techniques
Building on Negotiating Techniques delivered in Module 3, you will learn:

• Self-assessment techniques
• Techniques for effective negotiation
• Game Theory and Behavioural Economics for negotiation

NEGOTIATION WORKSHOP: Tying it All Together (Mock Negotiation)
In small groups, you will engage in a mock negotiation representing either the vendor or customer. You will receive individualized support and feedback from an expert facilitator and benefit from a master debrief and group discussion.