Intellectual Property Agreements and Licensing

This course introduces the fundamentals of intellectual property agreements with a focus on licensing. The course starts off with coverage of the more basic intellectual property types of agreements (non-disclosure/confidentiality, non-analysis, material transfer, field-testing, intellectual property assignment). It then builds upon on these fundamentals to introduce more complex intellectual property types of agreements (technology transfer, joint development, university research collaboration, service, and consulting agreements). With regard to each of these agreements, students will gain an understanding of business scenarios for their use, and the important basic clauses necessary for drafting, analyzing and negotiating purposes. The course will then cover in great depth creative licensing arrangements and agreements involving licensing patents, trade secrets, copyrights, trademarks, and the right of publicity. Various aspects of leveraging intellectual property through licensing transactions are explored through licensing problems, including evaluation of client needs, negotiation of terms and conditions, IP valuation and royalty determination, due diligence investigations, crafting and interpreting contract language, licensing enforcement / dispute resolution, royalty auditing, administering a licensing program, and antitrust and tax considerations. Licensing in different industries and markets will also be explored. Relevant case law will be discussed and applied to licensing transactions and contract language. An intellectual property licensing project (see below) and practice problems to be discussed in class relative to each reading assignment will allow students to apply the principles learned throughout the course. The course format will combine lecture and discussion on intellectual property agreement fundamentals and practice problems with a hands-on team based intellectual property licensing project. With regard to the IP licensing project, students will work in teams of two (licensor and licensee) on a business proposal involving an intellectual property licensing transaction as an integral component. Acting as either a licensor or a licensee, each student will put in place the necessary basic agreements (non-disclosure/confidentiality, non-analysis, etc.) for negotiating a license with the other party. Teams will present via Powerpoint® presentations their business proposals, licensing proposals (including a term sheet and a letter of intent to license), and licensing programs to the class for feedback. Finally, each student will then prepare a comprehensive intellectual property licensing agreement that captures the essence of the business proposal and the negotiation with the other party. Prerequisite: Survey of Intellectual Property. Enrollment limited to 12 students.