Intellectual Property (IP) Licensing

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 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.

Avoiding Common Drafting Mistakes in IP Licenses
This session considers common drafting mistakes in licenses for patents, copyright, trade-secrets, trademarks and industrial designs. You will also learn how to identify and eliminate unwanted ambiguity in your licenses.

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.

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

Representations and Warranties in the License Agreement
A practical session on the do’s and don’ts 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.

IP Strategy
• Focus will be 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

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 damages clauses
• Tips on using or refusing specified remedies

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.

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.

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

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

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

Negotiating Techniques
• BATNA, ZOPA and other key negotiation concepts
• Positional vs. win-win negotiating
• Negotiating processes and approaches
• Key attributes of a successful negotiator Consulting Agreements
• Default IP ownership for consulting projects
• Resolving the consultant-client tug-of-war over IP
• Evolving business models for consultants

Demonstration: Negotiating and Drafting Indemnities
Faculty will demonstrate licensee/licensor perspectives in negotiating indemnities clauses, linking interests to specific language and highlight

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 learned 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 pitfalls 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.