Amy Abeloff is of counsel in Kirkland’s Los Angeles office. Amy counsels on intellectual property matters and has extensive experience in full-service global trademark portfolio management.
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In this program, we will provide a detailed examination of intellectual property (IP) licensing agreements, catering to both foundational and advanced perspectives. We’ll begin by covering the essential elements of IP licensing agreements, highlighting the differences between patent, trademark, copyright, and trade secret licenses. Key provisions will be discussed from both the licensor and licensee perspectives, with an emphasis on clarity and precision in drafting.
Building on these basics, we’ll delve into more complex provisions and special considerations, including the unique needs of licensors and licensees. We will explore common pitfalls to avoid, with a special focus on software licenses, cloud computing, and the nuances of tailoring agreements to specific types of IP rights. This comprehensive approach ensures participants gain both a solid understanding of the fundamentals and the ability to navigate advanced aspects of IP licensing agreements.
Key topics to be discussed:
Date / Time: April 17, 2025
Closed-captioning available
Amy A. Abeloff | Kirkland & Ellis
Amy Abeloff is of counsel in Kirkland’s Los Angeles office. Amy counsels on intellectual property matters and has extensive experience in full-service global trademark portfolio management. Amy has extensive experience advising clients on the availability to use and register trademarks worldwide, preparing trademark filing strategies rangingfrom single trademarks to large, multijurisdictional projects, advocating for her clients offensively and defensively in pre-enforcement activity, and developing complex enforcement strategies incorporating online marketplace and social media takedowns as well as anti-counterfeiting activities. She also provides counsel to clients regarding availability to use and register copyright protectable material.
Amy is active on multiple committees of the International Trademark Association. She also represents several small businesses and nonprofit organizations in various pro bono matters, including trademark and copyright advising and counseling, prosecution and enforcement strategy.
Amy has assisted multiple large-scale, international companies across the alcoholic beverage, healthcare, insurance, financial services and consumer goods industries with global trademark portfolio management matters, including prosecution, filing strategies, clearance, pre-enforcement, enforcement, domestic and international oppositions and cancellations, coexistence and settlement negotiations, license review and revisions, among other intellectual property matters.
I. Patent vs. Trademark vs. Copyright vs. Trade Secret license agreements | 1:00pm – 1:10 pm
II. The grant clause | 1:10pm – 1:20pm
III. Reservations and restrictions| 1:20pm – 1:30pm
IV. Term and termination | 1:30pm – 1:40pm
V. Acknowledgment and maintenance of IP | 1:40pm – 1:50pm
VI. Consideration and royalties | 1:50pm – 2:00pm
Break | 2:00pm – 2:10pm
VII. Confidentiality and infringement provisions| 2:10pm – 2:20pm
VIII. Indemnifications, representations, and warranties | 2:20pm – 2:30pm
IX. Disputes, jurisdiction, and venue | 2:30pm – 2:40pm
X. Clauses specific to the type of IP rights license | 2:40pm – 2:50pm
XI. Special issues with software licenses and cloud computing | 2:50pm – 3:00pm
XII. Common drafting mistakes to avoid | 3:00pm – 3:10pm
only $395 yearly
only $395 yearly