The Practising Law Institute's (PLI) Understanding the Intellectual Property License 2023 took place November 2-3 in New York. The conference provided a comprehensive review of basic elements and practical considerations when engaging in licensing agreements for a variety of intellectual property formats. On November 2, Greenberg Traurig Shareholder Thomas D. Pease presented the session, "Patent and Technology Licensing."
The session focused on:
- Standard clauses and variations
- Important differences between patent and other technology licenses
- Defining the license scope (including fields of use and territorial limits)
- Negotiating compensation (royalties, milestone payments, license fees, etc.)
- Representations, warranties, and indemnities
- Sub-licensing rights
- Handling patent licensing issues in the context of joint development and software integration projects, including rights to improvements
- Rights and responsibilities for filing, prosecution, maintenance, defense and enforcement of patent rights