Negotiating License Agreements with Start-Ups

About the Course:

Licensing negotiations between large licensees and start-ups is wildly asymmetric. The large companies conduct scores of such negotiations every year while the typical start-up has never engaged in the process. The large licensee has a robust staff of highly skilled lawyers, technical experts, finance people and dedicated negotiators. The start-up is often going it alone. This webinar is designed to level the playing field.

Whether you are from a start-up company about to embark on one of your first license negotiations or a veteran licensing negotiator, this webinar will illuminate critical issues that are bound to transpire during negotiations. Among the issues discussed during this webinar are:

  • Complications of conducting a negotiation with a party having a low tolerance for negotiation
  • The role of lawyers in assisting start-ups negotiate license agreements
  • The role of licensing agents and patent brokers
  • Challenges of negotiating with party who has no experience with negotiating a deal
  • Challenges of start-up shifting position during negotiations
  • Differing perspectives on compensation and valuation
  • Challenges of negotiating the scope of the license such as the scope of any exclusivity relating to territory or fields of use
  • Differing views on who should control and finance any legal costs such as those relating to patent prosecution and maintenance fees
  • Conflicting views on the term of the license and reasons for termination
  • Challenge of negotiating indemnification clauses
  • Benefits and drawbacks of jointly-owned patents
  • Responsibility for enforcement and notification as well as how proceeds from enforcement will be shared

Course Leader: Kristie Prinz, Founder, The Prinz Law Office

Kristie Prinz's practice focuses on representing hardware, software, software-as-a service, biotech, medical device, medical software, web-based companies, and web-based healthcare-focused companies on a variety of domestic and international transactional matters, including but not limited to drafting and negotiating technical commercial agreements; developing standard terms of service; negotiating and drafting licensing agreements and collaborations; and advising companies generally on how to protect their intellectual property. Her practice includes advising individuals and early stage start-ups to large publicly traded companies, and includes Silicon Valley-based clients as well as companies all over the world, including but not limited to Canada, the United Kingdom, Australia, New Zealand, Europe, China, Korea, Indonesia, Singapore, and Malaysia.

Prior to opening her own firm, Kristie was in the licensing group of the New York-based intellectual property firm of Pennie & Edmonds LLP in Palo Alto, CA, which closed its doors in December 2003.

Kristie is licensed to practice law in the states of California and Georgia.

Course Length: Approx. 1.0 hours

$175 PER USER

Purchase Now:

Need help purchasing this course? Please contact Neomi Barazani at 609-919-1895 ext. 100 or at info@bdacademy.com.