Intellectual Property Agreement Fundamentals will introduce the participants to the fundamentals of contracts with a focus on those relating to intellectual property (confidential / proprietary information, trade secrets, inventions and patent applications). The course will provide an overview of the major sections of a contract and common types of IP related agreements, including confidentiality/non-disclosure, material transfer and testing, collaborative research, joint development, technical services, consulting, and patent / trade secret licensing. Participants will learn the appropriate type of agreement to use for a certain business scenario involving technology and intellectual property. Participants will also learn approaches for protecting and allocating IP rights when working with outside parties. Participants will also learn how to extract further value from their IP assets through creative technology licensing efforts with others.
The course will provide not only an overview of the various IP agreements, but will also discuss some of the more important agreement provisions included in each, as well as typical negotiation issues with each type of agreement. Once an agreement is in place, participants will also learn key considerations for effectively working with the other party to maximize effectiveness and avoid disputes with the other party. Lastly, you will also learn how to effectively work with an IP attorney to make sure that you are receiving the best possible representation in agreement drafting and negotiation.
Working effectively with IP counsel to receive the best possible representation
After taking this course, you will be able to:
Anyone involved in technology and business who has a need to interact with individuals and entities outside of their own organization with regard to sensitive technical and business information, technology development or technology exchange.
1. Overview of contract principles
2. Overview of the anatomy of an agreement
3. Detailed review and use of agreements relating to IP, important provisions in each, and common negotiation issues:
a. Confidentiality / Non-disclosure
b. Material transfer and testing
c. Collaborative research
d. Joint development
e. Technical services
g. Technology licensing (patent and/or trade secret)
4. Approaches for allocating IP rights between parties to technology development agreements
5. Best practices for performing under the agreement in order to:
a. Maximize project effectiveness
b. Meet agreement obligations
c. Avoid disputes with the other party
d. Protect IP rights
e. Expiration, termination and extension of Agreements
Best practices for working with IP counsel representing you in agreement drafting and negotiation
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Robert Migliorini is an in-house patent attorney and teaches Patent Law Fundamentals.