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Milgrim on Licensing

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Print Book :4 volumes, loose-leaf, updated with supplements and revisions
ISBN: 9780820517438
Published: August 11, 2011
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ISBN: 9780327168539
Published: August 11, 2011
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ISBN: 9780327168539
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Milgrim on Licensing is a comprehensive guide to licensing transactions in every substantive area of intellectual property. It provides practical advice and guidance on drafting individual clauses as well as complete agreements. It devotes one entire volume to sample forms. The strategy behind using particular language when drafting an agreement is discussed, and the discussion of individual clauses contains citations for many key points. It examines complex or hybrid licenses that cover more than one aspect of IP in the same license. It also examines the role of bankruptcy when licensing agreements are involved. Invaluable to both licensor and licensee attorneys, it is the most comprehensive resource on the subject.

Key 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

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Table of Contents


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