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Strengthening Your License - The Sequel to Mechanics of a License
August 20, 2024 - 3 Hour Virtual SeminarAugust 20 - 1:00 pm - 4:00 pm EASTERN Please note: We do not provide recordings of our professional development courses - attendance is expected. Level: Intermediate – Some experience, typically 1-3 years, with IP licensing and interest in specific topics. Description: This course will build on standard clauses discussed in the Mechanics of a License course, and examine less common, but very useful, terms that can be included in license agreements. The insights provided in this class, including the nuances of when and how to use these provisions, can help you negotiate strong and enduring license agreements. Modules: - Non-disclosure
- Relationship Management including Mediation and Arbitration
- Grant Backs
- Tying Purchases to the License
- Most Favored Licensee Provisions
- Personnel Support for Transfer of Information
- Agreement Assignment
- Software Escrow
You will learn the following topics: - What each of these terms means and their limitations
- When to use or not use these terms to optimize your license agreement
- How to leverage these terms for a better deal
Recommended LES courses to take in advance or equivalent experience: Recommended LES courses to take after: - Fundamentals in IP Valuation
Course Creators & Contributors: Thank you to our course chair, past course chairs and content contributors who have developed and improved this course over time including: - Frank Amini, Ph.D., CLP
- Jonathon K. Hance
- Louise Levien, Ph.D., CLP
- Matthew C. McNeill, CLP
- Samuel Mercer
- Karthika Perumal, Ph.D., CLP
- Mark D. Shelley II, Ph.D.
- Paul A. Stewart, CLP
- Karen Temple, Ph.D.
- Dell C. “D.C.” Toedt III, Course Chair
PricingMember Rate - $149.00
Non-Member Rate - $249.00
Student Rate - $149.00 Group rates available for parties of 3 or more. Contact education@les.org for information. InstructorsDell C. "D.C." Toedt III, Attorney, Professor of PracticeD. C. Toedt (the last name is pronounced "Tate"), a member of the Texas and California bars, is an attorney, arbitrator, and part-time law professor; he is a past chair of the Houston chapter of the Licensing Executives Society (USA and Canada). D.C. was formerly a partner and member of the management committee at Arnold, White & Durkee, at the time the second-largest IP litigation boutique in the U.S., with some 150lawyers in six cities. During the dot-com era, D.C. left AW&D to join a publicly-traded software company, BindView Corporation, as vice president and general counsel; as outside counsel, he had helped the founders to start the company. He served there until the company's successful "exit" when it was acquired by Symantec Corporation, the world leader in the company's field. Among other publications, D.C. was the lead author of the first edition of a one-volume treatise, The Law and Business of Computer Software. He is a graduate of the University of Texas at Austin in math (high honors) and law (law review); between college and law school he served his ROTC scholarship payback time as a U.S. Navy nuclear engineering officer in the Rickover program. Connect on LinkedIn Louise Levien, Ph.D., CLP, Executive Director, LES USA and CanadaLouise Levien has a PhD in Geochemistry and worked for 35+ years for ExxonMobil Upstream Research before retiring. She spent the first third of her career as a research scientist, the middle third as a supervisor and in various planning roles and the final third in the IP & licensing group. In that role, she often acted as the liaison between scientists and attorneys, as well as between ExxonMobil and companies or Technology Transfer Offices. During that time, she negotiated hundreds of agreements with IP terms, earned the CLP designation, and became the inventor of two patents. Since retirement, she has done some consulting work, but mostly volunteered.
She is on the Board of Directors and an active instructor for LES, a venture mentor for MD Anderson and the Univ. of TX, a mentor for the Woman’s Launchpad at Brown University and a marketing volunteer for College Money Matters. Connect on LinkedIn Frank Amini, J.D., Ph.D., CLP, IP Attorney, Shackelford, Bowen, McKinley & NortonAs a registered patent attorney, Frank Amini has written and prosecuted numerous patent applications in various technological areas, including materials science, nanotechnology, biotechnology, the life sciences, and the chemical arts. As a Certified Licensing Professional, Frank has drafted and negotiated numerous intellectual property license agreements in connection with the acquisition of commercialization rights for numerous technologies, including medical diagnostics, medical devices, fluid purification processes, software, and databases.
Frank holds a B.A. in Microbiology from the University of Texas at Austin, a Ph.D. in Biological Chemistry from the University of Texas Southwestern Medical Center, and a J.D. from Chicago-Kent College of Law. Connect on LinkedIn Karthika Perumal, Ph.D., CLP, Partner- Technology, Womble Bond Dickinson (US) LLP
Karthika Perumal, Ph.D. is a Partner in the Technology Transactions practice of Womble Bond Dickinson (US) LLP. Karthika’s practice involves all aspects of technology law with an emphasis on the protection, acquisition, and monetization of intellectual property in the healthcare and energy sectors across a wide range of technologies, such as biotechnology, biomedical devices, pharmaceuticals, chemicals, oil and gas processing, and software. Karthika handles a variety of transactions, including multiparty collaborations, joint ventures, manufacturing, supply, distribution, and software development, service, and support agreements. She leverages her background in scientific research and technology transfer to help clients meet their business objectives at every stage of product development. She has developed commercialization strategies for several technologies and participated in the structuring and financing of several startup companies. Karthika has a Ph.D. in Pharmacology from the Baylor College of Medicine, Houston, Texas and a JD from the University of Houston Law Center. She is a Certified Licensing Professional (CLP), the Immediate Past-President and Immediate Past-Chair of Licensing Executives Society - USA & Canada, and she has written extensively on IP licensing issues. She has been recognized by U.S. News in the Best Lawyers in America® 2024 edition for Technology Law and Trade Secrets Law. Karthika is committed to advancing and sponsoring careers of diverse professionals in the STEM and legal fields and is the recipient of the 2022 Excellence in Diversity Award from the Houston Intellectual Property Law Association.
Connect on LinkedIn
CANCELLATION and REFUND POLICY:No refunds will be granted for this education session. LES regrets that refunds will not be given for no-shows. A transfer of your full registration to another individual is permitted prior to the course by submitting written request to education@les.org. The individual submitting the transfer request is responsible for all financial obligations (any balance due) associated with that substitution. Funds from this program cannot be transferred to another education session without prior management approval. EMAIL CONSENT:By registering for this event, you permit LES to use your email address to communicate with you regarding LES events and their other services. You will have the ability to unsubscribe from these communications going forward. PHOTOGRAPHY CONSENT:By registering for this event, you permit LES to use photographs of you with or without your name and for any lawful purpose, including for example such purposes as publicity, illustration, advertising, and web content.
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