Structuring Patent Indemnification Provisions
Allocating Infringement Risk While Accounting for Changes to PTAB Estoppel and Statutory Bar Requirements
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will prepare counsel to IP owners, licensees, and licensors to protect their interests by allocating patent infringement risks during the negotiation of indemnification provisions in a patent license or vendor contract. The panel will offer best practices for negotiating and structuring patent indemnification provisions to allocate risk.
Outline
- Agreements in which such indemnification provisions are likely to appear
- Common structures for indemnification provisions
- Allocating infringement risk and distinguishing indemnification of patent claims from indemnification of other IP claims
- Best practices for negotiating and structuring patent indemnification provisions
Benefits
The panel will review these and other noteworthy issues:
- What should patent counsel consider when structuring indemnification provisions?
- What carve-outs are market?
- What should you do if your counterparty refuses to indemnify your client?
- What approaches should counsel use to protect a client's interests when negotiating an indemnification provision?
Faculty
William (Ty) Giltinan
Shareholder
Carlton Fields
Mr. Giltinan is the intellectual property and technology practice group leader. He is a licensed patent attorney whose... | Read More
Mr. Giltinan is the intellectual property and technology practice group leader. He is a licensed patent attorney whose practice includes patent, trademark, and copyright litigation, prosecution, and transactional matters. While Mr. Giltinan works with clients in a variety of industries, his practice tends to focus on assisting technology companies in their efforts to protect, monetize, and defend their intellectual property assets. He also serves on the firm’s privacy and cybersecurity task force and assists clients in matters involving privacy and data breach issues.
Close
Eleanor M. Yost
Shareholder
Carlton Fields
Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals,... | Read More
Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals, opinions, licensing and transactions. She also litigates high-stakes intellectual property disputes in state and federal courts, the U.S. International Trade Commission (ITC) and the USPTO prosecution. Ms. Yost is the lead author of PTAB Post Grant Proceedings: A Tactical Guide for Practitioners and serves on the Board of Directors of the PTAB Bar Association.
Close