Technology Licensing Agreements

Negotiating, drafting and executing sophisticated agreements that achieve business and technical goals

Tuesday, April 29, 2008

About

In today’s high-stakes technology environment, negotiating and maintaining win-win agreements is becoming more difficult as competition increases and deals become more complex. With millions of dollars at stake and your most prized technology assets on the table, you can’t afford to make the wrong move. Developing a commercial path that best suits your technology, while selecting the right partners and license structure to accommodate the deal, are crucial to achieving the most successful outcome. As more companies look to maximize revenue and commercialize IP assets, the goals of the deal, as well as the overarching corporate strategy must be factored into your negotiation strategy.

This publication from ACI’s Advanced Forum on Negotiating, Drafting, and Executing Technology Licensing Agreements was taken from a specifically designed senior-level licensing event for the following industries: Computer, Hardware, Telecom, Consumer Electronics, Semiconductor, Chemical, Power, Oil & Gas, and Aerospace. A distinguished faculty of leading counsel, in-house licensing and business development professionals, and IP strategists share their experiences and insights and provide sophisticated solutions to the difficulties and complexities routinely encountered in technology licenses. Join us as we discuss with you how to ensure your company’s deals maximize the value of your technology while also minimizing financial risk. This conference will provide you with the most up-to-date and practical strategies for structuring and negotiating profitable technology licensing agreements in today’s complex environment.

Contents & Contributors

About

In today’s high-stakes technology environment, negotiating and maintaining win-win agreements is becoming more difficult as competition increases and deals become more complex. With millions of dollars at stake and your most prized technology assets on the table, you can’t afford to make the wrong move. Developing a commercial path that best suits your technology, while selecting the right partners and license structure to accommodate the deal, are crucial to achieving the most successful outcome. As more companies look to maximize revenue and commercialize IP assets, the goals of the deal, as well as the overarching corporate strategy must be factored into your negotiation strategy.

This publication from ACI’s Advanced Forum on Negotiating, Drafting, and Executing Technology Licensing Agreements was taken from a specifically designed senior-level licensing event for the following industries: Computer, Hardware, Telecom, Consumer Electronics, Semiconductor, Chemical, Power, Oil & Gas, and Aerospace. A distinguished faculty of leading counsel, in-house licensing and business development professionals, and IP strategists share their experiences and insights and provide sophisticated solutions to the difficulties and complexities routinely encountered in technology licenses. Join us as we discuss with you how to ensure your company’s deals maximize the value of your technology while also minimizing financial risk. This conference will provide you with the most up-to-date and practical strategies for structuring and negotiating profitable technology licensing agreements in today’s complex environment.

Contents & Contributors

Blending Business Objectives and Legal Expertise to Create an Effective Deal Team
John Schiffhauer, Intel Corporation (Santa Clara, CA)

Balancing Protection and Use: Strategies for Carefully Crafting the Scope and Field of Use to Be Included Under the License
Mark Grech, Oracle Corporation (Redwood Shores, CA)
Thomas J. Scott, Jr., Goodwin Procter LLP (Washington, DC)

Open Source License Issues
James Gatto, Pillsbury Winthrop Shaw Pittman LLP (McLean, VA)

What Every Licensor and Licensee Needs to Know About Open Source Code
David M. Klein, Paul, Hastings, Janofsky & Walker LLP (New York, NY)

Setting a Value on the Intangible: Combining Traditional and Creative Valuation Approaches to Determine a Fair Market Price For Your Technology
Thomas Redder, Agilent Technologies, Inc. (Santa Clara, CA)
Lan Anh Nguyen, Agilent Technologies, Inc. (Santa Clara, CA)

Drafting Win-Win Technology Licensing Agreements While Negotiating Contentious Contract Terms
Harvey Kellman, Marriott International, Inc. (Bethesda, MD)
William A. Tanenbaum, Kaye Scholer LLP (New York, NY)

Enforcing the License: Monitoring, Maintaining, and Adding Value to the License Agreement Post Deal
Jeff Gustafson, EMC Corporation (Pleasanton, CA)

Enforcing the License: Monitoring, Maintaining, and Terminating the License Agreement Post-Deal
Donald Boles, InterDigital, Inc. (King of Prussia, PA)

Hot Topics in Patent Licensing
Barton E. Showalter, Baker Botts L.L.P. (Dallas, TX)

Patent Law and Practice Changes: Impact on Technology Licensing
Harold C. Wegner, Foley & Lardner LLP (Washington, DC)

Developing a Licensing Program that is Consistent with the Commercialization Path of Your Technology
J. Monty Wright, Commercial Strategy, LLC (Rochester, NY)
Terence N. Church, Esq., GC Law Group (Danville, CA)

How to Choose and Market to Potential Licensees
Joseph Yang, PatentEsque Law Group PLLC (Menlo Park, CA); Cryptography Research, Inc. (San Francisco, CA)

Balancing Competing Interests
Jim Bullock, Autonomy etalk (Irving, TX)
Suzanne Y. Bell, Wilson, Sonsini, Goodrich & Rosati (Palo Alto, CA)
Effective Licensing Partnerships with Universities
Katharine Ku, OTL, Stanford University (Palo Alto, CA)

Developing and Nurturing Effective Licensing Partnerships with Universities: An Academic Perspective
Tena Herlihy, MIT Technology Licensing Office (Cambridge, MA)

Structuring and Managing Multi-Party Licensing Agreements
Brian R. Balow, Dickinson Wright PLLC (Bloomfield, MI)

Structuring and Managing Multi-Party Technology Licensing Agreements
Christine Lam, Juniper Networks (Sunnyvale, CA)

Improvements on Licensed and Collaborative Technology
Jeffrey E. Harmes, K&L Gates (Seattle, WA)
Michael Kimball, eHealth, Inc. (Mountain View, CA)



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