Milgrim on Licensing

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Milgrim on Licensing

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A complete guide to the intellectual property licensing transaction. The set covers licensing in all substantive areas of intellectual property, and provides practical guidance on drafting individual clauses and complete agreements.

Coverage includes:
- Licensing characteristics of patents, trade secrets, trademarks and copyrights
- Licensing of multiple intellectual property
- Antitrust considerations
- The effects of NAFTA on licensing
- Drafting and sample contract clauses
First published in 1991.
Part I LEGAL CHARACTERISTICS OF INDUSTRIAL PROPERTY PERTINENT TO LICENSING

CHAPTER 1 INDUSTRIAL PROPERTY PERTINENT TO LICENSING

CHAPTER 2 LICENSING CHARACTERISTICS OF PATENTS

Appendix 2A: Patentable Subject Matter: Mathematical Algorithms and Computer Programs

Appendix 2B: Copyright and Patent Protection for Computer Software: Are They Mutually Exclusive?

Appendix 2C: Tales from the Algorithm War: Benson TO IWAHASHI, It's Deja Vu All Over Again

Appendix 2D: Examination Guidelines for Computer Related Inventions Final Version

Appendix 2E Using Apportionment to Rein in the Georgia Pacific Factors

CHAPTER 3 LICENSING CHARACTERISTICS OF TRADE SECRETS

CHAPTER 4 LICENSING CHARACTERISTICS OF TRADEMARKS

Appendix 4A: FRANCHISE RELATIONSHIP LAWS: A MINEFIELD FOR FRANCHISORS

CHAPTER 5 LICENSING CHARACTERISTICS OF COPYRIGHTS

CHAPTER 5A INSURANCE COVERAGE FOR INTELLECTUAL PROPERTY LITIGATION

Appendix 5A: Contract Principles as a Guide for Protecting Intellectual Property Rights in Computer Software: The Limits of Copyright Protection, The Evolving Concept of Derivative Works, and the Proper Limits of Licensing Arrangements

Appendix 5B: International Legal Protection of Computer Programs

Appendix 5C: Computer Software: Treatment Abroad

CHAPTER 6 LICENSING MULTIPLE INTELLECTUAL PROPERTY

CHAPTER 6A NAFTA'S INTELLECTUAL PROPERTY ASPECTS

CHAPTER 6B Intellectual Property and Dispute Resolution Under the Uruguay Round

CHAPTER 6C The Internet

CHAPTER 6D UCITA

Appendix 6D 1: The Evolution of the Uniform Computer Information Transaction Act

Part II TRADE REGULATION PERTINENT TO TECHNOLOGY AND TRADEMARK

CHAPTER 7 GENERAL TRADE REGULATION CONSIDERATIONS PERTINENT TO LICENSING

CHAPTER 8 SPECIFIC LICENSING PRACTICES ANALYZED UNDER THE ANTITRUST LAWS

Appendix 8A: Department of Justice: Antitrust Enforcement Guidelines for International Operations (Nov. 10, 1988)

Appendix 8B: Statement of Charles F. Rule Deputy Assistant Attorney General Antitrust Division Before the The John Marshall Law School

Appendix 8C: The Antitrust Division's Perspective on Intellectual Property Protection and Licensing The Past, The Present and The Future

Appendix 8D: Validity Challenges and the Obligation to Pay Accrued Royalties: Lear v. Adkins Revisited

Appendix 8E: Antitrust Guidelines for the Licensing of Intellectual Property

Appendix 8F Know How and Technical Information Consent Decrees

Part III CONSIDERATIONS ABOUT PRELICENSE DISCLOSURE, PROCEDURES, LICENSE STRUCTURE AND NEGOTIATION

CHAPTER 9 PRELICENSE STEPS

Part IV LICENSING PROVISIONS, ALTERNATIVES; TECHNICAL AND NEGOTIATING COMMENTARY

CHAPTER 10 GENERAL OBSERVATIONS ABOUT DRAFTING

CHAPTER 11 BASIC TYPES OF AGREEMENT

CHAPTER 12 CONSIDERATIONS RELATING TO THE PARTIES AND THEIR AFFILIATES

CHAPTER 13 NARRATIVE EXPLANATION OF PURPOSES OF AGREEMENT

CHAPTER 14 DEFINITIONAL MATTERS

CHAPTER 15 RIGHTS GRANTED AND LICENSED

CHAPTER 16 OTHER MATTER FURNISHED

CHAPTER 17 IMPROVEMENTS AND DEVELOPMENTS OF EITHER PARTY

CHAPTER 18 MONETARY CONSIDERATION

CHAPTER 18A TAXATION OF LICENSING TRANSACTIONS

CHAPTER 19 TECHNICAL ASSISTANCE

CHAPTER 20 ROYALTY AND RELATED REPORTING

CHAPTER 21 CONFIRMATION OF ROYALTY REPORTS

CHAPTER 22 DUTIES TO DEFEND/PROSECUTE ALLEGED INFRINGEMENT AND MISAPPROPRIATION

CHAPTER 23 REPRESENTATIONS

CHAPTER 24 SUPPLY OF GOODS AND SERVICES

CHAPTER 25 SECRECY PROCEDURES

CHAPTER 26 ASSURANCES OF TERMS AS FAVORABLE AS OTHER LICENSEES

CHAPTER 27 DURATION AND BASES FOR TERMINATION

CHAPTER 27A RESTRICTIVE COVENANTS CONCERNING TERMINATION IN FRANCHISE AGREEMENTS

CHAPTER 28 GENERAL CONTRACT CLAUSES

Part V FORMS

FORM GROUP I CONFIDENTIAL DISCLOSURE AGREEMENTS

FORM GROUP II PATENT LICENSES

FORM GROUP III TRADE SECRET LICENSES

FORM GROUP IV COPYRIGHT LICENSES

FORM GROUP V PATENT AND TRADE SECRET LICENSES

FORM GROUP VI COPYRIGHT AND TRADE SECRET LICENSES

FORM GROUP VII TRADEMARK LICENSES

FORM GROUP VIII OTHER HYBRID LICENSES

FORM GROUP IX INTERNET AGREEMENTS

FORM GROUP X OUTSOURCING AGREEMENTS

Part VI UNIFORM COMPUTER INFORMATION TRANSACTIONS ACT
Roger M. Milgrim is a partner of Paul, Hastings, Janofsky & Walker, New York, New York. He has litigated a wide variety of intellectual property and technologically oriented cases involving trade secrets, copyright, and related issues. He regularly negotiates and prepares complex technology-based transactions, including joint ventures, software development, technology licensing agreements, and computer facilities management arrangements. Recent matters have involved microprocessor technology for elevators, microprocessor and CCD array technology for autofocus cameras, artificial skin and related applications, Ziegler-Natta catalytic technology, and an array of customer list and related confidential business information matters. Mr. Milgrim has extensive domestic and international corporate experience and has represented major U.S., French, and Japanese corporations in corporate acquisitions, joint ventures, technology licensing, distributions arrangements, financing, and other commercial transactions. He is the chair of the Firm's Intellectual Property and Technology Group.

Mr. Milgrim is the author of two multi volume intellectual property treatises: Trade Secrets (1967), generally regarded as the standard treatise in the field, and Licensing (1991), both of which are currently supplemented. He is an Adjunct Professor of Law, New York University School of Law, since 1974. His professional memberships include serving as past chair of the Patent and Trademark Committee, Antitrust Law Section, New York State Bar Association, and past chair of the Trade Secret Committee, Patent, Trademark and Copyright Section, American Bar Association. He lectures frequently to lawyers and business groups nationally.

Eric E. Bensen is a coauthor of Milgrim on Trade Secrets and Milgrim on Licensing, two leading intellectual property treatises, and advises clients on complex intellectual property and litigation management matters. He has taught patent, copyright, and intellectual property licensing classes as a Visiting Assistant Professor of Law at Hofstra University School of Law and was in practice for more than 12 years with Paul, Hastings, Janofsky & Walker LLP and Dewey Ballantine LLP. During that time, he led attorney teams in successful litigations of highly complex patent and trade secret cases before the International Trade Commission and a wide range of intellectual property cases in federal and state courts throughout the country. He also negotiated sophisticated copyright, patent and trademark licenses both here and abroad and advised clients on intellectual property licensing issues arising in large transactional matters. His clients have included technology, pharmaceutical, medical device, agricultural, entertainment and consumer product companies.