Aspatore Books: Intellectual Property Licensing Strategies: Leading Lawyers on Drafting IP Agreements, Negotiating Terms, and Evaluating Financial Implications (Inside the Minds)

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Intellectual Property Licensing Strategies: Leading Lawyers on Drafting IP Agreements, Negotiating Terms, and Evaluating Financial Implications (Inside the Minds)

Author: Multiple Authors
Published Month: Jun 2007
Media: Paperback
Length: 540 pages
ISBN: 9781596227934
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Description

Intellectual Property Licensing Strategies is an authoritative, insider’s perspective on the ins and outs of licensing in IP and best practices for negotiating and drafting successful agreements. Featuring partners and chairs from some of the nation’s leading law firms, these experts guide the reader through the intricacies of an IP agreement, offering tips on structuring Exclusive Dealer Agreements, Mutual Non-Disclosure Agreements, Software Licenses, and Service Agreements. These IP experts evaluate the important differences and similarities between state and federal laws involving copyrights, trademarks, patents, and trade secrets, discussing the importance of understanding the Uniform Trade Secrets Act and Primary IP Ownership and License Options. From identifying IP assets and the right forms of protection to evaluating concepts such as limiting liability and indemnity, the chapters dive into strategies for enhancing a client’s IP value while educating for future success. Additionally, these leaders reveal their strategies for planning defensively, keeping abreast of change, and negotiating success-fully. The different niches represented and the breadth of perspectives presented enable readers to get inside some of the great legal minds of today as these experienced lawyers offer up their, thoughts around the keys to success within this ever-evolving field.

Inside the Minds provides readers with proven business intelligence from C-Level executives (Chairman, CEO, CFO, CMO, Partner) from the world’s most respected companies nationwide, rather than third-party accounts from unknown authors and analysts. Each chapter is comparable to an essay/thought leadership piece and is a future-oriented look at where an industry, profession, or topic is headed and the most important issues for the future. Through an exhaustive selection process, each author was hand-picked by the Inside the Minds editorial board to author a chapter for this book.

Chapters Include:

1. Tony Perkins, Shareholder, Bernstein, Shur, Sawyer & Nelson – “Fundamental Considerations for IP Licensing and Commercialization”

2. Richard E. Neff, Partner and Chair, IP & Technology Department, Greenberg Glusker – “Licensing Technology and Content: Important Considerations”

3. Jonathan Ilsong Ahn, Principal, Semmes Bowen & Semmes PC – “Bringing Value to the IP Client”

4. Melvin C. Garner, Principal, Darby & Darby _ “Using IP to Accomplish Client Business Objectives”

5. Michael R. Graham, Partner, Marshall, Gerstein & Borun LLP – “The Process of Protecting IP”

6. Kerry T. Scarlott, Partner, Posternak Blankstein & Lund LLP – “Providing Guidance in the IP Arena”

7. Jonathan G. Polak, Director, Chair of Intellectual Property Group, Sommer Barnard PC – “Practical Considerations in IP Licensing”

8. Ieuan G. Mahony, Partner, Holland & Knight – “Do Your Homework Before Deeply Engaging Your Opponents”

9. Bruce L. Plotkin, Shareholder, Brownstein Hyatt Farber Schreck PC – “Developing a Business Plan for IP”

10. Carole Aciman, Shareholder, Greenberg Traurig LLP – “Strategies for Negotiating with and Protecting IP”

Appendices Include:

Appendix A: Value-Added Reseller and Support Agreement
Appendix B: Mutual Non-Disclosure Agreement
Appendix C: Consulting Agreement
Appendix D: Employment Agreement Letter
Appendix E: Software License and Service Agreement
Appendix F: Videolark Network User Agreement
Appendix G: Uniform Trade Secrets Act
Appendix H: Exclusive Dealer Agreement
Appendix I: Confidential Non-Exclusive Probation Agreement
Appendix J: Exclusive License Agreement with Right to Sublicense
Appendix K: Checklist for Patent and/or Know-How License Agreements
Appendix L: Patent and Technical Information License Agreement
Appendix M: Sample Trademark and Patent License Provisions
Appendix N: Purchasing and Licensing Agreement
Appendix O: Hosting Agreement
Appendix P: Exclusive License Agreement
Appendix Q: License Agreement
Appendix R: License Agreement
Appendix S: IP Non-Infringement Indemnity Considerations
Appendix T: Flow of Potential Development Rights
Appendix U: Potential Source Dependencies
Appendix V: Relationships Permitted Under Cyrix
Appendix W: Primary IP Ownership and Licensing Options