Transactional Intellectual Property Law

This course introduces students to the law, theory and practice of intellectual property transactions. The course will set the stage by briefly familiarizing students with the major forms of intellectual property protection, namely patent, copyright, trademark and trade secret laws. It will then explore the law, policy and common practices affecting transactions regarding, e.g., creation and ownership (i.e. assignments and other agreements between companies and their employees and independent contractors), sale and licensing, collaboration (i.e. non-disclosure, joint-venture, and cross-licensing agreements), non-traditional licensing (i.e. open source and academic technology licensing), and institutions for collective management of IP rights (such as patent pools and performance rights organizations). The course will include a hands-on simulation of the structuring, documenting and negotiation of a cross-border technology transaction. The simulation will be anchored in a hypothetical business case, which will include the acquisition of a technology portfolio and the subsequent licensing of that technology. The class will consider the representations and warranties, covenants, indemnities and other provisions which would be negotiated by the parties to the acquisition transaction, as well as the due diligence which would be conducted. We will then focus on the provisions which would be included in the licensing agreement, such as the structure of fees or royalties, the scope of the license grant, the right to sub-license, exclusivity, geographic restrictions, information sharing, title to improvements and cross-licenses. We will also consider provisions addressing data privacy and export control laws and the taxation of license fees or royalties.