Week 1 Friday, February 5 – noon to 1 pm EST
Week 2 Friday, February 12 – noon to 1 pm EST
Week 3 Friday, February 19 – noon to 1 pm EST
Week 4 Friday, February 26 – noon to 1 pm EST

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SPE Member Rate $100
Non-Member Rate $200
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Are you planning on communicating or collaborating with individuals and/or entities outside of your organization on technical information or technology development? Learn how to protect your technology and intellectual property (IP) interests by making sure an appropriate IP agreement is put in place with the other party prior to such communication or collaboration. Don’t be caught off guard and have your IP rights compromised when working with others by learning the fundamentals of IP agreements and their use!

Who Should Attend?

Anyone involved in technology and business who has a need to interact with individuals and entities outside of their own organization with regard to sensitive technical and business information, technology development or technology exchange.

Course Overview

This workshop series is intended as an introductory primer in intellectual property agreements for scientists, engineers and managers involved in business and technology. It introduces the participants to the fundamentals of contracts with a focus on those relating to intellectual property (confidential / proprietary information, trade secrets, inventions and patent applications). The course will provide an overview of the major sections of a contract and common types of IP related agreements, including confidentiality/non-disclosure, material transfer and testing, collaborative research, joint development, technical services, consulting, and patent / trade secret licensing. Participants will learn the appropriate type of agreement to use for a certain business scenario involving technology and intellectual property. Participants will also learn approaches for protecting and allocating IP rights when working with outside parties. The course will also cover how to extract further value from your IP assets through creative technology licensing efforts with others.

The course will provide not only an overview of the various IP agreements, but will also discuss some of the more important agreement provisions included in each, as well as typical negotiation issues with each type of agreement. Once an agreement is in place, participants will also learn key considerations for effectively working with the other party to maximize effectiveness and avoid disputes with the other party. Lastly, you will also learn how to effectively work with an IP attorney to make sure that you are receiving the best possible representation in agreement drafting and negotiation. No prior knowledge of intellectual property or contracts is required.

How You’ll Benefit From this Course

  • Learn contracting concepts and fundamentals
  • Understand the anatomy of an agreement
  • Know whether you should utilize an IP agreement prior to communicating and working with an outside party on something involving technology in order to protect IP rights
  • Understand the various type of IP agreements, the business and technical use of each type of agreement and the important provisions for each type of IP agreement
  • Learn about common negotiation issues with each type of IP agreement
  • Understand different approaches for allocating IP rights between parties to an IP agreement
  • Know the appropriate type of IP agreement to put in place prior to working with an outside party
  • Know whether technology licensing may be an option for extracting more value from your IP and steps for entering into a licensing deal
  • Understand important things to do during the course of performance of the agreement to meet your obligations under the contract, to avoid disputes with the other party, and to protect your IP rights
  • Know how to effectively and efficiently work with IP counsel that may represent you in contract drafting and negotiation to receive the best possible representation

Key Topics You’ll Learn About

Week 1

  • Overview of contract principles
  • Overview of the anatomy of an agreement
  • Confidentiality / Non-disclosure Agreements
    • Overview and use
    • Key provisions
    • Negotiation issues

Week 2

  • Material Transfer and Testing Agreements
    • Overview and use
    • Key provisions
    • Negotiation issues
  • Collaborative Research Agreements
    • Overview and use
    • Key provisions
    • Negotiation issues
  • Joint Development Agreements
    • Overview and use
    • Key provisions
    • Negotiation issues

Week 3

  • Technical Services Agreements
    • Overview and use
    • Key provisions
    • Negotiation issues
  • Consulting Agreements
    • Overview and use
    • Key provisions
    • Negotiation issues
  • Technology Licensing Agreements (patent and/or trade secret)
    • Overview and use
    • Key provisions
    • Negotiation issues

Week 4

  • Best practices for performing under the agreement in order to:
    • Maximize project effectiveness
    • Meet agreement obligations
    • Avoid disputes with the other party
    • Protect IP rights
    • Expiration, termination and extension of agreements
  • Best practices for working with IP counsel representing you in agreement drafting and negotiation

About the Speaker

Bob Migliorini is an in-house intellectual property attorney with Exxon Mobil Corporation. As a practicing IP attorney, Bob assists clients in all aspects of IP law, including patent preparation and prosecution, patent opinions, client counseling, and IP agreements and licensing. He is an author or coauthor of six IP journal articles related to patent law. Prior to becoming an attorney, Bob worked for 17-years for ExxonMobil Chemical Co., Films Business, in a variety of technical, operations and leadership positions. He is also an inventor or coinventor of 14 U.S. patents related to thermoplastic films. He is licensed to practice law in various states and before the U.S. Patent and Trademark Office. Bob is also an adjunct law professor at Pace University School of Law in White Plains, NY where he teaches courses in Patent Practice & Procedure and IP Agreements & Licensing to law students.

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