Negotiating & Drafting IP Licensing Agreements: Top 10 Pitfalls

Licensing agreements are deceptively simple documents that set the parameters to an often complex set of transactions.   Far too often, the first draft is a boilerplate document which fails to take into account the negotiated rights and obligations of the parties and the business realities of the license relationship.  While counsel is the recipient of client pressure to make the “deal happen” at a rapid pace, it serves all parties better in the long run to ensure each clause is appropriately drafted to the peculiarities of the deal.  This requires a closer look at boilerplate language and traditionally contentious clauses, such as payment, exclusivity, and IP ownership and maintenance.  IP practitioner Olivera Medenica will go through the main clauses that require particular attention in a licensing agreement and will highlight the common pitfalls encountered when negotiating each.  Special emphasis is placed on trademark rights.

Learning Objectives:

I.    Define the licensor and licensee obligations

II.   Explore enforcement methods and strategies for avoiding problems

III.  Comprehend exit strategies when a relationship goes sour

IV.  Understand the different IP rights at issue

V.   Explore different boilerplate language and the consequences of each

Program Director: Sigalle Barness