Laws of Innovation Series: Negotiating Patent and Know-How License Agreements

Negotiating Patent and Know-how license agreements can be tricky. Striking a balance that benefits all interested parties isn’t easy, and making sure your legally-binding agreements clearly reflect everyone’s expectations is even harder. When done wrong, an oversight could result in major losses on either end.

Make sure you understand what you’re getting into before entering a Patent and Know-how license agreement by attending the next Laws of Innovation discussion! Legal experts from Woods Oviatt Gilman, Dennis B. Danella and Ron Kisicki, will go over a sample Patent and Know-how license to show you what individual terms could look like from both the perspective of the licensor and licensee. During this session, our presenters will explain how to:

• Identify and understand the other parties needs
• Build trust and credibility with the other party
• Create an agreement where each party walks away as a “winner”
• Clearly reflect the needs of the parties in the terms of the agreement
• Clearly define the triggers for termination in the terms

Not only that, but they will share how this information relates to similar licenses, like tech-transfer and service agreements. So don’t miss your chance to learn useful tactics that will help prepare you for a smooth negotiation process — register for the upcoming Laws of Innovation discussion today!

Dennis B. Danella

Dennis B. Danella is a Partner in the Firm’s Intellectual Property Practice Group. His national practice focuses on assisting clients in all areas of intellectual property law, including patent, trademark, copyright, trade secret, and domain name matters. He works closely with all of his clients ranging from start-up and emerging companies to large multinational corporations to protect and enforce their rights in a cost effective and efficient manner.

Prior to joining the Firm, Mr. Danella was a partner at Jaeckle, Fleischmann & Mugel, LLP in its Rochester office, and an associate at Shook Hardy & Bacon LLP in its Kansas City, Missouri office.

Ronald J. Kisicki

Ronald J. Kisicki is a Partner in the firm’s Business & Finance Department and a member of the Intellectual Property Practice Group. He is admitted to practice before the U.S. Patent Office, and concentrates his practice in Intellectual Property Law. He is experienced in managing large patent portfolios and in counseling clients on various intellectual property matters. He also has extensive experience handling intellectual property litigation, representing both plaintiffs and defendants in patent, trademark, copyright and trade secret infringement suits.

Mr. Kisicki has a BSME degree from Western Michigan University, an MBA from Rochester Institute of Technology and a Law degree from Michigan State, formerly Detroit College of Law.