Webcast: US Patent Licensing Law for European Practitioners
- Live and interactive!
- The essentials in only two days!
- High-level knowledge transfer
Serie (abgeschlossen)
From
1.480,00 €
plus VAT
Services & Process
Veranstaltung - 1.480,-€ zzgl. MwSt.
The fee includes the 'live' participation via internet, high-quality course material for download, a participation certificate as well as technical support including a test meeting.
Period:
Each day from 13:00-17:00 CET
Booking details
Serie (abgeschlossen)
From
1.480,00 €
plus VAT
Services & Process
Veranstaltung - 1.480,-€ zzgl. MwSt.
The fee includes the 'live' participation via internet, high-quality course material for download, a participation certificate as well as technical support including a test meeting.
Period:
Each day from 13:00-17:00 CET
This online course provides drafting and negotiating advice for EU practitioners, with precise references to existing US law.
Your speakers
D. Brian Kacedon
Partner, US Patent Attorney, Finnegan LLP, Washington, DC (USA)
Brian Kacedon focuses on patent licensing, litigation, prosecution, and opinion work. A substantial portion of his practice involves…
Your speaker
D. Brian Kacedon
Partner, US Patent Attorney, Finnegan LLP, Washington, DC (USA)
Brian Kacedon focuses on patent licensing, litigation, prosecution, and opinion work. A substantial portion of his practice involves patent licensing and related litigation. Mr. Kacedon's role in these matters has included assisting clients in conducting market assessments for their patents, conducting licensing negotiations, drafting licensing agreements, and participating in related litigations. He also has extensive experience in drafting patent, know-how, and software license agreements in many industries.
Erik Verbraeken
Deputy General Counsel, Valeo S.A., Paris (France)
Before joining Valeo, Erik was Head of Procurement & IP Transactions
EMEA of Johnson Controls and Associate Director of the Business Law and Contracts…
Your speaker
Erik Verbraeken
Deputy General Counsel, Valeo S.A., Paris (France)
Before joining Valeo, Erik was Head of Procurement & IP Transactions
EMEA of Johnson Controls and Associate Director of the Business Law and Contracts Division of IFP Energies nouvelles and Legal Counsel of Shell International.
Timothy J. May
U.S. Patent Attorney, Partner, Finnegan LLP,
Washington, D.C. (USA)
Timothy counsels clients in all areas of United States patent practice, ranging from patent procurement to opinion preparation to…
Your speaker
Timothy J. May
U.S. Patent Attorney, Partner, Finnegan LLP,
Washington, D.C. (USA)
Timothy counsels clients in all areas of United States patent practice, ranging from patent procurement to opinion preparation to litigation before U.S. district courts.
What to Expect
- European vs. US License Agreements: Principal Differences
- Drafting Patent License Agreements
- Issues in International Licenses: Language, Choice of Law, Negotiating Agreements
- Unpatented Technology Agreements: CDA, Royalty Base etc.
- Implied Licenses/Patent Exhaustion: Estoppels etc.
- Avoiding Antitrust and Misuse Issues
Who Should Attend
Do you work as a corporate IP/patent/legal counsel or professional or as a patent attorney/attorney-at-law in private practice and deal with licensing issues?
Then this online course is designed for you. Knowledge of IP law is required.
Objective of the Event
This course highlights principal differences between the European law system and the US 'common' law systems and explains main 'tricks' and 'traps' to be taken into account by European practitioners when drafting license contracts. The course will focus on drafting and negotiating advice for EU practitioners, with precise references to existing US law.
The online course lays the groundwork for a clause by clause examination of all significant elements of a patent licensing agreement. Focus is on how and why each provision serves the business needs of theparties while remaining legally viable. The main components of typical licensing agreements, from the opening part through signature, are examined in detail. Throughout the course, the speakers emphasize achieving legally satisfactory drafting results by recognizing the logical principles that underlie the job to be done.
Your Benefit
- Comprehensive understanding of the differences in contract law between Europe and the United States
- Practical guidelines for drafting and reviewing license agreements
- Insights into antitrust regulations in Europe and the United States
- Expertise in legally compliant drafting of licensing agreements for patents, technologies, and joint research projects
- Opportunity to address specific questions with experienced experts during the event
Programme
12, 13, 23 and 24 November 2026
Each day from 13:00-17:00 CET
- Confidential Disclosure Agreements
- Definition of Technology
- Royalty Base Considerations
- Disclaimers and Reservations
- Restrictions of Licensee's Freedom
- Joint Research Agreements
- Implied Licenses by Acquiescence
- Implied Licenses by Conduct
- Equitable Estoppel/Legal Estoppel
- Patent Exhaustion
- Statute; Per se/Rule of Reason
- Relevant Market; Restrictions
- Patent Misuse; Challenging Validity
- Overview of European competition law
- The Technology Transfer Block Exemption
- The R&D Block Exemption
- Contract principles: EU vs. US law
- The '10W' of contract drafting:' A chain is as strong as its weakest links'
- Assignment v. exclusive license, agreement to assign v. assignment
- Effects of joint ownership
- Exclusive/Nonexclusive/Sole, Covenant Not to Sue; Express/Compulsory
- Sublicenses/Cross Licenses/Shopright/Field of Use; Software Licenses
- Preamble, Recitals, Definitions
- The Grant Clause; Improvements
- Determining Reasonable Royalties, Royalty Terms
- Consideration, Payment, International Payment Issues
- Product Liability Indemnification
- Representations and Warranties
- Assignment of the Agreement
- Most Favored Licensee; Best Efforts
- Infringement by a Third Party & Indemnity
- Term and Termination
Unpatented Technology
Agreements
Unpatented Technology Agreements
- Confidential Disclosure Agreements
- Definition of Technology
- Royalty Base Considerations
- Disclaimers and Reservations
- Restrictions of Licensee's Freedom
- Joint Research Agreements
Implied Licenses/
Patent Exhaustion
Implied Licenses/ Patent Exhaustion
- Implied Licenses by Acquiescence
- Implied Licenses by Conduct
- Equitable Estoppel/Legal Estoppel
- Patent Exhaustion
US Antitrust Issues in Licensing & Licensee Estoppel
US Antitrust Issues in Licensing & Licensee Estoppel
- Statute; Per se/Rule of Reason
- Relevant Market; Restrictions
- Patent Misuse; Challenging Validity
European Antitrust Issues in Licensing
European Antitrust Issues in Licensing
- Overview of European competition law
- The Technology Transfer Block Exemption
- The R&D Block Exemption
License Agreements under the European ('Codified') and US ('Common') Law Systems
License Agreements under the European ('Codified') and US ('Common') Law Systems
- Contract principles: EU vs. US law
- The '10W' of contract drafting:' A chain is as strong as its weakest links'
Transfer of Rights to Patents, Patent Applications and Inventions
Transfer of Rights to Patents, Patent Applications and Inventions
- Assignment v. exclusive license, agreement to assign v. assignment
- Effects of joint ownership
Types of Licenses
Types of Licenses
- Exclusive/Nonexclusive/Sole, Covenant Not to Sue; Express/Compulsory
- Sublicenses/Cross Licenses/Shopright/Field of Use; Software Licenses
Elements of the Agreement, i.a.
Elements of the Agreement, i.a.
- Preamble, Recitals, Definitions
- The Grant Clause; Improvements
- Determining Reasonable Royalties, Royalty Terms
- Consideration, Payment, International Payment Issues
- Product Liability Indemnification
- Representations and Warranties
- Assignment of the Agreement
- Most Favored Licensee; Best Efforts
- Infringement by a Third Party & Indemnity
- Term and Termination
Downloads
Request the documents using our form.
Weitere Informationen
Note
Those wishing to get a comprehensive overview of the whole patent licensing process and experience the patent licensing process through a business simulation might want to attend the in-person Licensing Summer Course in Munich on 3rd and 4th June 2027 (event no. 27061130).
CPD: 14 hours
Attendees of this event will get 14 CPD hours certified.
Customer Testimonials
What satisfied participants say
Our Recommendations
Further Information
Your Contact Person
We are happy to advise you personally and individually.
Jean-Claude Alexandre Ho, LL.M.
Deputy Department Manager
+49 6221 500-675
jc.alexandreho@forum-institut.de