Commercial Contracts Through the IP Looking Glass: Key Patent and Trademark Licensing Provisions

The law firm of Norris McLaughlin, P.A., is pleased to present “Commercial Contracts Through the IP Looking Glass: Key Patent and Trademark Licensing Provisions.” Members of the firm in the Intellectual Property Practice Group, Jeanne M. Hamburg and Joseph A. Farco, will discuss some best practices in drafting commercial contracts involving intellectual property rights and pitfalls to avoid when negotiating terms.

Commercial Contracts

Participants will learn about exclusive versus non-exclusive licensing provisions and how they may differ depending on whether the property being licensed is a patent or a trademark. Speakers will also discuss provisions for patent marking and the importance of monitoring the quality of products and services subject to a licensed trademark.

Additional topics will include:

  • Indemnification
  • Non-infringement warranties
  • Addressing enforcement of rights by the trademark owner and licensee against infringements
  • Handling assets connected to trademark and patent rights, such as marketing materials
  • Access to know-how and trade secrets; and ownership of subsequently developed materials and inventions

Please Note: This course has been approved for 1.2 Continuing Legal Education (CLE) credits in New Jersey, and 1.0 CLE credit in Pennsylvania. Attorneys seeking CLE credit in New York may apply by submitting a request for credit using a New Jersey CLE certificate.

When: Wednesday, June 16, 2021

10:00 a.m. – 11:00 a.m.

Register for Norris McLaughlin, Attorneys at Law, Legal Events in New Jersey, New York, and Pennsylvania

About Jeanne Hamburg

Jeanne concentrates her practice in all aspects of copyright and trademark law, both in litigation and in the transactional area. She litigates copyright, trademark, and cybersquatting cases through trial and, if necessary, appeal. To this end, Jeanne has acted as national counsel in federal courts across the country to bring and defend infringement claims for clients, both foreign and domestic. Additionally, she has recovered domain names for clients in many Uniform Domain Name Dispute Resolution Proceedings and prosecuted and defended numerous opposition and cancellation proceedings and ex parte appeals in the Trademark Trial and Appeal Board. Jeanne recently litigated through appeal to the Federal Circuit a food trademark case that has been described as generating one of the most important trademark decisions in 2018.

In the transactional area, Jeanne counsels clients on the intellectual property aspects of mergers and acquisitions. She is experienced in copyright and trademark clearance, prosecution, and enforcement, and has particular expertise with contentious and transactional issues arising from the Internet.

Jeanne is a co-author of the firm’s trademark, copyright, and unfair competition law blog, “More Than Your MaⓇk™.” She is a frequent speaker and writer on intellectual property topics and is active in many trade groups in industries whose clients she serves. Additionally, she is a member of the International Trademark Association (INTA), currently serving on the Leadership Development Committee. She formerly served on the Government Officials Training Committee, was nominated and served as Chair of INTA’s Law Firm Committee, and was selected as a speaker for INTA’s Trademark Basics “Maintaining the Perfect Partnership” seminar held in New York for inside and outside counsel.

About Joe Farco

Joe focuses his practice on intellectual property matters including litigation, patent, and trade secret transactions.

As a trial patent lawyer, Joe represents patent owners, including inventors, and foreign and domestic companies in district court and the International Trade Commission. He drafts complaints, answers, 12(b) motions, discovery, and discovery motions, as well as takes and defends fact, expert, and 30(b)(6) depositions. Joe handles pre-filing due diligence for patent owners on how to best assert their patents; cease-and-desist correspondence to avoid litigation; and all aspects, including oral arguments, of Markman proceedings, summary judgement briefs, pre- and post-trial memoranda, technical and damages expert preparation and discovery, accounting and costs motions, appeals to the United States Court of Appeals for the Federal Circuit, and petitions for certiorari to the Supreme Court of the United States. He also spearheads electronic discovery and strategies for electronically searchable information (ESI).

Joe makes advance preparation and efficient strategy development his priorities, especially for witnesses who are not native English-speakers and where numerous experts are involved. He has prepared foreign and domestic witnesses and experts for trial.