Negotiating & Drafting IP Licensing Agreements: Top 10 Pitfalls (Update)

In this program, attorney Olivera Medenica addresses the main clauses that require particular attention in a licensing agreement. Here, she will highlight the most common pitfalls encountered when negotiating these deceptively simple documents that often impact a complex set of transactions.

Far too often, the first draft of a licensing agreement 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. Though counsel is usually the recipient of client pressure to execute the deal quickly, it benefits all parties involved to ensure each clause is appropriately drafted to the peculiarities of the deal. Ms. Medenica helps practitioners take a closer look at boilerplate language and traditionally contentious clauses, such as payment, exclusivity, and IP ownership and maintenance.

Learning Objectives:

1. Define the licensor and licensee obligations
2. Identify the different IP rights at issue   
3. Prepare exit strategies for when a relationship breaks down and discuss enforcement methods and strategies for avoiding problems in the first place
4. Address the consequences of common boilerplate language