Intellectual Property Overview

The Nuts and Bolts of Licensing: Strategies for Negotiating to Yes


When negotiating license agreements, there is much to be considered.  The presenters of this course look at many issues that can cause headaches and they provide sound advice as to how you can properly address those issues and negotiate to a "yes" in the licensing process.  Some of the topics they speak to are valuation, royalty payments, and standard essential patents. Using real-life examples, they highlight the essentials of a successful negotiation.


I. Introductions
    A. The First Topic Addressed
II. Things to Think About When Licensing
    A. Protecting the Patent
    B. Defense of Suspension Provisions
    C. Value and Royalty Payments
    D. Get What You need
    E. License Scope
    F. Q&A
III. Valuation of IP
    A. Licensing Models and Key Considerations
    B. Stay Apprised of Case Law
    C. Due Diligence and Valuation
    D. Methodologies in Valuation Approaches
    E. Let's Wrap It Up
IV.  Patent Licensing and Standard Essential Patents
    A. Overview of Topics
    B. Laying the Foundation
    C. What Is the Cost?
    D. Risk Versus Reward Analysis
    E. Standard Essential Patents
    F. Looking at Comps and Building on Compromise
V.   Negotiating the Deal
    A. Setting the Stage for Negotiation
    B. Engaging in Negotiation
    C. Spinning Out SEPs
    D. What Would an Agreement Look Like?
    E. Involving a Start-Up
    F. Incentives to Reach and Agreement
IV.  It's Up for Discussion
    A. More for Discussion

Content Provided

The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 13,500 members. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 50 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.

AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

To qualify for membership, applicants must be members in good standing of the Bar of a court of record of the United States or any State. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts three regularly scheduled conferences a year, mid-winter, spring, and fall, at which the Association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.

Speakers / Authors:

Photo of Roy P. D'Souza

Roy P. D'Souza

Roy P. D’Souza is a Managing Director responsible for leading Ocean Tomo’s Valuation practice. Mr. D’Souza’s work has focused on valuations of intangible, intellectual property, and tangible assets for acquisitions and divestitures, bankruptcy and restructuring, establishment of intellectual property monetization strategies including licensing, mergers and joint venture/partnership formations, litigation support, and financial reporting and tax matters. Mr. D’Souza also has experience performing business enterprise, equity and debt valuations. Industries in which he has experience include wireless and wired communications, semiconductors, life sciences/pharmaceuticals, computer hardware and software, various light and heavy manufacturing (e.g., pulp/paper, automotive, plastics), and energy/utilities (primarily power generation).

Prior to Ocean Tomo, Mr. D’Souza led a corporate services valuation practice at an independent valuation firm and spent a major portion of his career in public accounting, first at Coopers & Lybrand LLP and then KPMG LLP, where he was a Senior Manager in their State and Local Tax practice and then acted as the Midwest Director for all tangible asset and energy/utility industry valuation services that included business enterprise and intangible asset valuations.

Mr. D’Souza has served as an expert witness in intellectual property, intangible asset, business enterprise and equity valuation disputes, having testified in Delaware Chancery Court and the Circuit Court of Cook County, Illinois. He is a frequent speaker as well as an instructor on intellectual property matters.

Mr. D'Souza received his B.S. from DePaul University.

Photo of Eric E. Silverman

Eric E. Silverman

Eric Silverman is IP Counsel at 3M. He has over 10 years of IP experience and is a valuable legal and business partner who finds creative ways of leveraging IP to achieve business objectives.

Mr. Silverman’s specialties include patent prosecution and strategy; identification and protection of trade secrets; and negotiation and drafting of IP agreements. He is an experience patent litigation attorney with areas of technical expertise including organic and industrial chemistry, pharmaceuticals, nanotechnology, materials science, polymers, coatings, adhesives, biotechnology, medicine, and medical devices.

Prior to working for 3M, Mr. Silverman was an attorney at Cooley LLP from 2012 – 2014, an attorney at Dickstein Shapiro LLP from 2010 – 2012, and a Patent Examiner at the USPTO from 2005 – 2010.

Mr. Silverman received his J.D., with Honors from The George Washington University Law School in 2011, his Ph.D. in Chemistry from the University of Florida in 2005, and his B.S. from Carnegie Mellon University in 2000.

Photo of Richard S. Taffet

Richard S. Taffet

Richard S. Taffet is a partner with Morgan, Lewis & Bockius LLP where he serves as lead counsel in a wide range of antitrust, intellectual property, and other domestic and international litigation and counselling matters. He represents clients in the communications, consumer electronics, financial, pharmaceuticals, textiles, chemicals, software, and industrial products industries.

For close to 35 years Mr. Taffet has tried cases in state and federal courts, as well as in arbitration proceedings; represented clients’ interests in appeals to numerous Federal Courts of Appeal and the Supreme Court of the United States; and has advised clients in connection with a broad range of competition and intellectual property matters. Richard also regularly assists clients in matters before the United States Department of Justice and Federal Trade Commission, as well as foreign competition and other regulatory bodies, including in European and Asian jurisdictions.

Mr. Taffet is also recognized as a leading counsel and thought leader in connection with matters involving technology standards development. For more than 30 years, he has represented standard setting organizations (SSOs) and technology consortia, as well as participants in such bodies in connection with the development and use of SSO patent and intellectual property rights (IPR) policies, licensing and technology transfer strategies, and related commercial and antitrust issues. These representations have included the development of SSO and consortia IPR and patent policies, numerous litigations, advocacy to U.S. and foreign legislative bodies and enforcement and regulatory agencies, and extensive legal and economic writing and speaking endeavors.

Mr. Taffet received his J.D. from Brooklyn Law School in 1980, and his B.A. from Sarah Lawrence College in 1977.


Price (USD)

Standard Rate: $149.00
Subscribers: FREE
Pillsbury U Online: $149.00
Metro State Univ: $149.00


Course Code : 772546

Release Date : 12/29/2016

Length : 1hr 23min
Recorded Date : 10/28/2016

Format Type : eLearning
Mobile Compatible

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