Introduction and Overview

P. Bradley Limpert, Cameron MacKendrick LLP

• Overview of the types of IP rights you might encounter
  
• How various types of IP can be involved in a single transaction
  
• Key concepts: independent creation, similarity of work, validity

Key Patent Concepts

Michelle Wassenaar, Johnston Wassenaar LLP

• Preconditions for obtaining a patent: what makes something
  new? What makes something non-obvious? What is patentable,
  what isn’t?
• Patents on: business methods, software, life forms, other
• Validity: what may make a patent invalid and unenforceable?
• Rights granted by a patent
• How to determine what a patent covers, and when it’sinfringed
• The impact of joint ownership

The Elements of Trademarks

R. Scott MacKendrick, Cameron MacKendrick LLP

• What can and can’t be trademarked
  
• Trade name vs. trademark
  
• Registered vs. unregistered marks; the registration process
  
• Marking requirements in Canada and elsewhere
  
• Use and expungement
  
• Trademark infringement; “confusion” as key element in
  infringement
  
• Assignment of trademarks
  
• Ongoing responsibilities of the owner; monitoring use

The Essentials of Copyright

Professor Carys Craig, Osgoode Hall Law School, York University

• What does copyright protect? subject matter; idea vs. expression; special uses in software
  
• Term of copyright
  
• The scope of fair dealing exceptions to copyright infringement
  
• Copyright in compilations: Robertson v. Thomson
  
• The nature and limits of moral rights
  
• Neighbouring rights – how they arise, what you need to know
  
• Defences to copyright infringement

Trade Secrets and Confidential Information

P. Bradley Limpert, Cameron MacKendrick LLP

• What makes something a trade secret?
  
• Is there a difference between confidential information and
  trade secrets?
  
• Common law rules regarding trade secrets
  
• Have reasonable steps been taken to protect secrecy?
  
• The development of constructive trusts
  
• Contractual terms for secrets
  
• The role of fiduciary duties
  
• Duties of good faith or loyalty
  
• How confidentiality can be destroyed: public disclosure;
  independent creation; receipt from third parties; court orders/
  regulatory agencies
  
• Joint ownership of trade secrets

Identifying the Underlying IP and Verifying the Rights

P. Bradley Limpert, Cameron MacKendrick LLP

A sound approach to your IP licensing transaction starts before you begin any negotiations or drafting. This session will cover the essential checklist to review in determining the precise nature, scope, validity, and ownership of the IP that is at issue.

• Keeping IP rights and technology distinct
  
• Due diligence and verifying the IP— a checklist
  
• Confirming validity: patents; copyright; trademarks
  
• Confirming other IP rights: plant breeder rights; integrated circuit topographies; industrial designs
  
• Patents not yet issued: identifying applications
  
• Exploring the quality of applications or registrations
  
• Unregistered IP rights
  
• Assessing the breadth of the rights
  
• IP ownership: joint; public; collaboration; other scenarios
  
• Most favoured customer provisions
  
• IP rights existing in multiple jurisdictions

The License Grant and Scope of Use Clauses:

Critical Considerations at the Core of Your Agreement

Regardless of which type of IP is being licensed, much of your negotiating and drafting attention will be focused on the scope of the license and the precise extent of the license grant. Some issues in the scope and grant

of license are common to most licenses, while others are specific to the type of IP being licensed. In a series of presentations, the parameters

of the grant and scope of license will be considered in detail, including specific sessions focusing on the grant and scope issues unique to each type of IP.

(A) Essential Issues in Grant and Scope of License

Lee Webster, Osler, Hoskin & Harcourt LLP

• The form of license: exclusive vs. non-exclusive vs. sole
  
• Restrictions on territory and/or products produced
  
• Issues and considerations in sub-licensing
  
• Assignment of IP rights
  
• Rights in future-created IP
  
• Rights to sue for past infringement
  
• Particular issues in cross-licensing
  
• Prosecution and maintenance of rights during the agreement term
  
• Obligations of the licensee: sales, marketing, and other obligations
  
• How to spot competition/anti-trust issues that might arise
  
• Implied licenses: pre-existing or co-existing

(B) Patent Rights Grant and Scope

P. Bradley Limpert, Cameron MacKendrick LLP

• Field of use for patents
  
• Implied licenses: how they can arise
  
• Foundry rights: limiting the licensee’s right to make for third parties
  - conditional sales
  - special problems with “have made” rights
  
• Impact of first sale doctrine
  
• Patent marking requirements
  
• Patent abuse under the IPEG’s
  
• Different ways to define “improvements”

(C) Copyright Grant and Scope

Brian W. Gray, Ogilvy Renault LLP

• Licensing of derivative works
  
• Private copying
  
• Neighbouring rights
  
• Access/portal vs. content use licenses
  
• Derivative works
  
• Impact of the presence of open source content
  
• Moral rights
  
• Digital rights management, digital rights information, and Fair Dealing

(D) Trademark Grant and Scope

Keith Desjardins, Gowling Lafleur Henderson LLP (Ottawa)

• Quality control
  
• Audits and samples
  
• Co-branding and cross-licensing
  
• Sub-licensing of the trademark
  
• Termination
  
• Records management

(E) Trade Secrets and Confidential Information

Grant and Scope, Data Licenses

Jason Hannibal, Commercial Counsel, IT Services

Research In Motion Limited

• Categories of information
  
• Protecting trade secrets; licensing trade secrets; sub-licensing
  
• The impact of a licensee’s disclosure
  
• Permissible uses of licensed information
  
• Auditing and monitoring the use of information
  
• The impact of the licensor’s public disclosure
  
• Actions on termination
  
• Key aspects of a data license
  - EU approaches to data that you need to know:

  the EU Data Directive
- determining what IP rights may attach to data:

  possessory? contractual? copyright? statutory?
- what causes of action might you have?

Demonstration: Negotiating and Drafting

the License Grant and Scope of Use Clauses

Sheldon Burshtein, Blake Cassels & Graydon LLP
Stephen Spracklin, Deputy General Counsel, Law and
Government Affairs, Hewlett-Packard (Canada) Co.

Utilizing samples from several different types of licensing agreements, presenters will demonstrate and discuss negotiating approaches and specific language examples for the license grant and scope clauses.

Term, Termination and Renewal of the License

Stephen Spracklin, Deputy General Counsel, Law and
Government Affairs, Hewlett-Packard (Canada) Co.

• Determining the term of license
  
• Implied termination or renewal rights
  
• Termination mechanisms where there is a breach
  
• Winding down provisions: dealing with inventory on hand;
  decommissioning factory equipment; other wind-down issues
  
• What breaches can be cured?
  
• Special termination events

Representations and Warranties in the License Agreement

Keith G. Hunt, Counsel to Labatt U.S.A and Labatt Breweries of Canada

A practical session on the do’s and don’ts of the reps and warranties in your license agreement. Experienced counsel will share tips on getting the best protection, and ensuring you don’t promise what you can’t give.

• Details and tips on the key representations: ownership; IP validity; non-infringement; enforceability; good standing
  
• What is meant by “to the knowledge of”?
• Obtaining good and clear title
  
• Reps and warranties to consider disclaiming
  
• Special issues where a party is a public or quasi-public entity

Cross-Border Licensing: Key Issues

Sunny Handa, Blake Cassels & Graydon LLP (Montréal)

With many IP licenses involving non-Canadian entities and intellectual property, it is important to be aware of some of the issues that can arise when licensing in or out of other jurisdictions. In addition, regulatory rules and restrictions can be traps for unwary counsel. This session provides an overview of some of these issues, with an emphasis on transactions involving U.S. parties.

• The significance of choice of law in licensing agreements
  
• Cautions: local laws not excluded by a choice of law clause
  
• Considering the impact of different IP laws in different
  jurisdictions
  
• Checklist of export controls and embargos to watch out for
  
• Strategies for dealing with currency exchange rates
  
• Impact of transferring people, money, and data across borders

Practical Business Strategies for Effective Licensing

Michael Cannata, BOCA Advisory Services Inc.
Matthew Rappaport, Managing Director, IP Checkups Inc., California
Rui Resendes, Executive Director, GreenCentre Canada
Alex Porat, Panel Counsel, Magna International Inc.

• Using technology to facilitate licensing
  
• Steps for identifying in and out licensing opportunities
  - assessing freedom to operate
  - matching patents and market opportunities
  - identifying gaps in technology and IP portfolios
  
• Best practices in “carrot” licensing – licensing new technology and know-how
  
• Tips and strategies for “stick” licensing – licensing to infringers
  
• Patent litigation as a means to a licensing settlement: a U.S. perspective
  
• Emerging models for patent litigation financing

Indemnities and Other Remedies: Constructing the Safety Net

Oxana Iatsyk, Counsel, Ganz

• Identifying your potential liabilities
  
• Risk allocation: what’s fair, what’s achievable
  
• The impact of statutory provisions
  
• Limitations on damages
  
• Approaches to limits on liability
  
• Should indemnities be capped?
  
• Indemnity for breach of contract; personal injury; negligence
  
• The use and abuse of liquidated damages clauses
  
• Tips on using or refusing specified remedies

Demonstration: Negotiating and Drafting Indemnities

Oxana Iatsyk, Counsel, Ganz
P. Bradley Limpert, Cameron MacKendrick LLP

Presenters will demonstrate licensee and licensor perspectives in
negotiating indemnities clauses. Through varied examples, the parties’ interests will be linked to various specific language. Precedents will be provided and discussed, and potential drafting pitfalls will also be highlighted.

Royalties and Payment Terms

Glenn Tautrims, Hallinan Tautrims Inc.
Peter Ross, Peter Ross Consulting

Licensors want to ensure they receive the compensation they expect, and licensees don’t want to overpay. There are many aspects to consider when negotiating payment terms. This session will help guide you through the many and potentially varied nuances in compensation for the use of IP.

• Royalty factors: scope of intellectual property, cost savings,
  significance of benefits, industry standards
  
• Specifying the royalty base: gross sales, net sales, units sold or
  produced
  
• Special problems with defining the royalty base: advances;
  bundled transactions; non-cash consideration; loans; share
  purchases
  
• Royalty stacking: when licenses are required for enabling,
  blocking, or third party patents
  
• Royalty audits
  - royalty audit clauses: what is needed, what is practical, what is

  enforceable
- harnessing the effective power of royalty audits

• “Royalty free” licenses: what you need to know
  
• Other approaches to royalties: minimum royalties; escalating royalties
  
• Other compensation apart from royalties: milestone payments; initial fees
  
• What happens if a patent becomes invalid?
  
• The impact of third party infringement

The Impact of Insolvency on the License Agreement

Michael MacNaughton, Borden Ladner Gervais LLP

• Why license rights don’t fit the insolvency model and the possible consequences for licensors and licensees
  
• Can you make them fit through the use of trusts, security
  interests or co-ownership interests?
  
• Canada-U.S. differences in insolvency scenarios: the fate of source code
  
• Dealing with intellectual property rights in insolvency: contract repudiation; contract assignment
  
• Recent legislative activity: changes to the Bankruptcy and Insolvency Act and the CCAA