IP License Compliance Reviews and Audits: Assessing and Optimizing IP
How to Protect IP Rights, Double Royalty Income, or Pay No Royalties
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide IP counsel on conducting license compliance reviews and audits. The panel will examine the underreporting of royalties, compliance with other provisions of the license, language to include in a license, and lessons from recent court decisions. The panel will also discuss special considerations for patent, trademark, trade secret, and copyright licenses and will address compliance issues after termination of license.
Outline
- Why review and audit?
- Statistics on underreporting of royalties
- Reasons for underreporting
- Solutions for maintaining compliance
- Provisions to include in IP licenses
- Recent court decisions
- Review and audit process
- Confirm compliance with other license provisions
- Additional considerations for patent, trademark, copyright, and trade secret licenses
- Compliance after termination of license
Benefits
The panel will review these and other highly relevant issues:
- How are licensors losing money and how are licensees paying more than required?
- What are the best practices for an effective IP license compliance review and audit program?
- What language should be included in each type of IP license to avoid compliance pitfalls?
Faculty
John M. Augustyn
Shareholder
Leydig Voit & Mayer
John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client... | Read More
John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client counseling, and prosecution. Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that IP and business issues require creative and cost effective legal solutions. He has authored several articles and chapters for books, has appeared on multiple television and radio programs, has taught law school classes, and has provided over 30 CLE programs to thousands of corporate and outside counsel. His legal success has been recognized by selection to Best Lawyers, Super Lawyers, IAM Patent 1000, Top 100 High Stakes Litigators, Fellow to Litigation Counsel of America, and other honors. Please click on his photo above for more information.
Litigation
John has been lead counsel in patent and trade secret litigations throughout the country at the trial and appellate levels. He also has been lead counsel in Post Grant proceedings at the USPTO and coordinated post grant proceedings in other countries. In addition, he has litigated cases at the International Trade Commission. His litigation experience has involved several areas, including electronics, magnetics, sensors, control systems, medical devices, automotive, and consumer products.
Opinions
John counsels and renders opinions on patent infringement and invalidity including major product launches in competitive patent landscapes. These opinions often involve large patent families with multiple US patents and with existing litigations and patent office proceedings throughout the world.
Patent Prosecution
He has extensive experience in formulating patent strategies and managing patent portfolios. John manages the US and non-US patent prosecution for several international corporations. He has prepared or supervised the preparation of over 1000 US original patent applications and oversaw the prosecution of over 3000 non-US patent applications.
Due Diligence
John performs due diligence for mergers and acquisitions. The due diligence involves an analysis of the patents, trademarks, trade secrets, licenses, agreements, products, services, manufacturing processes, software, marketing, and standards by standard setting organizations.
IP Agreements
He successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee, including patent licenses, technology licenses, trade secret agreements, joint venture agreements, trademark agreements, and research and development agreements.
Trade Secrets
John advises clients on trade secret matters including: litigating trade secret cases, negotiating trade secret agreements, advising clients on the best techniques for protecting their trade secrets, and helping clients decide whether to use trade secret versus patent protection.
Laura M. Schaefer
Attorney
Leydig Voit & Mayer
Ms. Schaefer is a trademark attorney with experience in trademark litigation and prosecution, as well as policing and... | Read More
Ms. Schaefer is a trademark attorney with experience in trademark litigation and prosecution, as well as policing and enforcement. She has served as counsel for national and international clients in federal court litigations, where she has managed all aspects of discovery, including deposing fact and expert witnesses, drafting and filing a number of dispositive motions, as well as pretrial preparation. Further, Ms. Schaefer has worked closely with experts, including those with expertise in trademark surveys, damages, and pharmaceuticals. She also has significant experience in complex inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), including through trial. Ms. Schaefer has significant experience with ICANN proceedings relating to domain name disputes and takedown procedures before various social media websites.
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