2025-08-21 2025-08-21 Novotel München City Arnulfpark +49 89 242078-0 +49 89 242078-150 Novotel München City Arnulfpark Arnulfstr. 57, 80636 München München, 80636 1,860 € zzgl. MwSt. D. Brian Kacedon https://forum-institut.de/seminar/25121133-munich-winter-course-on-us-and-eu-patent-licensing/referenten/25/25_12/25121133-course-munich-autumn-course-on-us-patent-licensing_kacedon-d-brian.jpg Munich Winter Course on US and EU Patent Licensing

This course provides drafting and negotiating advice for EU practitioners, with precise references to existing US law.

Topics
  • 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.
Aims and objectives
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 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 the parties while remaining legally viable.
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 in-person event

Course - US and EU Licensing,  Law and Best Practices

Munich Winter Course
on US and EU Patent Licensing


Benefits
  • The essentials in only two days!
  • High-level knowledge transfer

Webcode 25121133

Jetzt buchen

JETZT Buchen

Referenten


Alles auf einen Blick

Termin

04-05/12/2025

04-05/12/2025

Zeitraum

4 - 5 December 2025 - Munich I each day from 09:00 to 17:00 CET

4 - 5 December 2025 - Munich I each day from 09:00 to 17:00 CET

Veranstaltungsort

München

München

Gebühr
Your contact

Jean-Claude Alexandre Ho, LL.M.
Lawyer, Conference Manager

+49 6221 500-675
jc.alexandreho@forum-institut.de

Details

This course provides drafting and negotiating advice for EU practitioners, with precise references to existing US law.

Topics

  • 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.

Aims and objectives

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 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 the parties while remaining legally viable.

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 in-person event

Detailed programme

4 - 5 December 2025 - Munich I each day from 09:00 to 17:00 CET

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
  • Assignment v. exclusive license, agreement to assign v. assignment
  • Effects of joint ownership

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.
  • 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
  • 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 by Acquiescence
  • Implied Licenses by Conduct
  • Equitable Estoppel/Legal Estoppel
  • Patent Exhaustion

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
  • Overview of European competition law
  • The Technology Transfer Block Exemption
  • The R&D Block Exemption

Tips & Hints

CPD: 10.5 hours

Attendees of this event will get 10.5 CPD hours certified.

Benefits of a FORUM Institut training course

While attending our in-person events, you can also benefit from our Learning Space, our digital all-in-one training platform. There are many benefits to using our holistic online learning environment in conjunction with in-person events.

  • Viewing and downloading all event documents
  • Accessing the event’s programme and information
  • Downloading the speakers’ presentations
  • ‘Deluxe’ chat: group chats, one-to-one chats, one-to-one video chats
  • Online networking and communication
  • A central repository for documents and media
  • Other services and apps such as Padlet and Mentimeter available directly on the platform

Access to and procedure for in-person events

Once you have registered for an event, we will send you the access information for your customer portal. Click here to log in to the customer portal using your email address and password. Please ensure you can access the customer portal before the day of the event.

You can find all the events you have registered for in your customer portal. Click the ‘Participate’ button and you will be redirected to the Learning Space. This is where you can view and download all event documents beforehand.

Networking

On the first evening of the course FORUM Institut für Management GmbH is pleased to invite the participants to a joint dinner in a traditional and cosy Munich restaurant.

This distinguishes our events

'High quality, high content density, great presenters, high value for my professional day-to-day life' Dr. Stephan Gürtler, Senior Patent Counsel, Merck KGaA (Germany)

'excellent material, good practice.' Göran Calås, Patent Counsel, Husqvarna AB (Sweden)

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Testimonials

What attendees in April 2018 have told us about the course:
Very valuable, high quality expert knowledge. All sections were very useful, it?s an excellent course.

IP Counsel


Excellent material.

Patent counsel


Very interesting. Teachers are very experienced.

Inhouse Counsel


High quality, great presenters. Good atmosphere, high value for my professional day-to-day-life.

Senior Patent Counsel


The course really met my requirement.

Konrad Hauber, IP Manager

Hochland SE


Great and interactive course with a lot of practical examples. Compared US & EU perspective was really helpful.

Aude Gaslonde, Patent Attorney

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