Crafting Effective IP Licensing Agreements: Key Insights from Licensor and Licensee Perspectives

Amy A. Abeloff | Kirkland & Ellis

Amy Abeloff is of counsel in Kirkland’s Los Angeles office. Amy counsels on intellectual property matters and has extensive experience in full-service global trademark portfolio management. Amy has extensive experience advising clients on the availability to use and register trademarks worldwide, preparing trademark filing strategies ranging from single trademarks to large, multijurisdictional projects, advocating for her clients offensively and defensively in pre-enforcement activity, and developing complex enforcement strategies incorporating online marketplace and social media takedowns as well as anti-counterfeiting activities. She also provides counsel to clients  regarding availability to use and register copyright protectable material.

Amy is active on multiple committees of the International Trademark Association. She also represents several small businesses and nonprofit organizations in various pro bono matters, including trademark and copyright advising and counseling, prosecution and enforcement strategy.

Amy has assisted multiple large-scale, international companies across the alcoholic beverage, healthcare, insurance, financial services and consumer goods industries with global trademark portfolio management matters, including prosecution, filing strategies, clearance, pre-enforcement, enforcement, domestic and international oppositions and cancellations, coexistence and settlement negotiations, license review and revisions, among other intellectual property matters.

Sharre Lotfollahi | Kirkland & Ellis

Sharre Lotfollahi is a partner in Kirkland & Ellis’ Intellectual Property Litigation Group and focuses on disputes involving patent, trade secret, trademark, and copyright, including licensing disputes regarding intellectual property. She has represented clients in disputes involving various areas of technology, including semiconductor manufacturing, microprocessor design, athlete tracking, online ad creation and customer service software, medical devices and implants.

Sharre has been a member of 11 trial teams, including serving as a first chair on two trials. At trial, Sharre has conducted direct and cross examinations of fact and expert witnesses, including preparing witnesses on jury-related performance. She has argued numerous motions, including at trial, and managed numerous other trial activities. She successfully led a trial team on behalf of low-income tenants against slumlords in South Los Angeles.

Sharre also advises clients on matters before the Patent and Trademark Office, contractual and licensing issues, and commercial legal strategy.

John Lynn | Kirkland & Ellis

John Lynn co-leads Kirkland’s Technology & IP Transactions Practice and heads the practice on the West Coast out of the Bay Area office and in Texas out of the Austin office. John is on the forefront of understanding the complex relationships between intellectual property and technology, on the one hand, and business matters and risk, on the other hand.

John works on a wide variety of matters in which technology, data protection, and artificial intelligence play a key role, including private equity matters and other mergers, acquisitions, and divestitures (particularly in the software and high technology fields); financings, secured lending matters, liability management transactions; and bankruptcies and restructurings. In addition, John assists clients in connection with joint ventures and strategic alliances; intellectual property and technology transfers, licenses, and development agreements; royalty buy-outs; data transfer and license arrangements; and other commercial contracts (such as supply, distribution, and service agreements).

Lauren Schweitzer | Kirkland & Ellis

Lauren Schweitzer is an intellectual property litigation partner in the Los Angeles office of Kirkland & Ellis LLP. Lauren concentrates her practice on copyright, trademark, internet, and advertising litigation.  Lauren has experience with various stages of litigation, including fact discovery, motion practice, trial, and appeal. She is also active in pro bono matters.

Won summary judgment for PepsiCo in trademark infringement suit brought by seller of ready-to-drink coffee Represented C&M Investment Group, Ltd. and Karlin Holdings, entities owned by Dr. Gary Michelson, in litigation stemming from interference with C&M’s efforts to collect on a $24 million judgment for fraud, breach of fiduciary duty and civil racketeering. On May 17, 2019, following a week-long jury trial, Kirkland secured jury verdicts of roughly $2.5 million for the clients.

I. Patent vs. Trademark vs. Copyright vs. Trade Secret license agreements | 1:00pm – 1:10 pm

• Understanding the different types of IP rights and the unique considerations for each

II. The grant clause | 1:10pm – 1:20pm

• Clearly define the scope of the license and the legal rights being transferred

III. Reservations and restrictions| 1:20pm – 1:30pm

• Determining what rights are reserved and what limitations should be included in the agreement

IV. Term and termination | 1:30pm – 1:40pm

• Setting clear terms of duration and termination clauses to protect both parties

V. Acknowledgment and maintenance of IP | 1:40pm – 1:50pm

• Defining each party’s responsibilities related to IP maintenance, including upkeep of IP rights and registration

VI. Consideration and royalties | 1:50pm – 2:00pm

• Structuring compensation terms, including upfront payments, royalties, and other forms of consideration

Break | 2:00pm – 2:10pm

VII. Confidentiality and infringement provisions| 2:10pm – 2:20pm

• Ensuring protection of sensitive information and addressing how infringement issues will be handled

VIII. Indemnifications, representations, and warranties | 2:20pm – 2:30pm

• Key clauses for liability, ensuring that each party is protected from certain risks and responsibilities

IX. Disputes, jurisdiction, and venue | 2:30pm – 2:40pm

• How to structure the dispute resolution process, including selecting jurisdiction and venue

X. Clauses specific to the type of IP rights license | 2:40pm – 2:50pm

• Tailoring clauses based on the specific IP rights being licensed

XI. Special issues with software licenses and cloud computing | 2:50pm – 3:00pm

• Addressing unique concerns with licensing software and cloud-based services

XII. Common drafting mistakes to avoid | 3:00pm – 3:10pm

• Highlighting typical errors and oversights that can lead to costly issues for your clients