OSA Corporate Webinar Program

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Originally Recorded:
5 October 2011
Run Time: 90 minutes

• Live webinar
• 60-day access to recorded webinar
• PDF of the PowerPoint Presentation

• OSA Corporate Members: $75
• Non-Members: $175

Best Value:
Company License for multiple participants: $190 for OSA Corporate Members

Presented By:

OSA Corporate Associates

In Partnership with:


IP Contracts & Implementation Strategy: Joint Development, Licensing, and Non-Disclosure Agreements (Webinar #4)

Webinar Series: Maximizing Innovation R.O.I. Through Intellectual Property Ownership, Protection, Enforcement, & Strategy

Speakers: David K.S. Cornwell, Michael Q. Lee, and Monica Riva Talley, SKGF

This presentation will focus on an in-depth look at intellectual property contracts and the implementation strategies necessary for successful execution of each option. In addition to providing a thorough discussion of key employment contracts including non-competition, non-disclosure, non-solicitation, and joint development agreements, the speakers will discuss potential problems that could occur including coercion and ownership disputes. Advising new employers and litigation options will also be featured in this presentation. Finally, a discussion of patent and trademark licensing negotiations and agreements will round-out this overview of IP contracts.

What You Will Learn

  • The 411 on a variety of intellectual property contracts and how to implement each for successful execution and enforcement
  • The differences between non-competition, non-disclosure, non-solicitation, and joint development agreements, as well as when each can be enforced
  • How to spot potential contract problems including coercion and ownership disputes before they become a problem

Who Should Attend

  • In house legal counsel and other in house administrators of intellectual property
  • Managers, Directors, Vice Presidents, and C-Level Executives of U.S. and international companies with responsibilities in the following departments:
    • Intellectual Property & Licensing
    • Human Resources
    • R&D Portfolio Management
    • Product Development
    • Compliance
    • Marketing/Brand Management
    • Strategic Planning

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CornwellDavid K.S. Cornwell
David Cornwell is a Director at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox, where he heads the CleanTech Industry Group and the Patent Forensics Practice Group, and is also a director in the Mechanical Group. His technological experience is primarily in the areas of mechanical engineering and energy.

Mr. Cornwell specializes in patent litigation in the fields of consumer product protection, clean energy and clean technology, biotechnology, computers and related technologies. Mr. Cornwell has been lead counsel in over sixty patent cases, is known for his creative litigation strategies, and is viewed as a trusted advisor to Fortune 1000 companies headquartered around the world.

Prior to joining the firm, Mr. Cornwell was Associate Patent Counsel for the University of California at Los Alamos National Laboratory, and worked as a Patent Examiner in the field of missile guidance systems.

LeeMichael Q. Lee
Mike Lee is a director at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox. He counsels on a wide range of technology-related transactions, including joint development agreements, strategic alliances, license agreements, asset purchase agreements, contractor and services agreements, shrink wrap license agreements and manufacture/supply agreements. Mr. Lee is a Certified Licensing Professional™, a Vice President of the Licensing Executives Society (USA/Canada), and was featured as one of IAM 250's "World's Leading Patent & Technology Licensing Lawyers 2010."

He has extensive experience protecting inventions in a diverse range of technologies, including wireless transceivers; analog and digital control systems; computer processor and memory architectures; graphics processing units; expert systems; medical devices; and bioinformatics. Experienced with inter partes related matters, Mr. Lee assists his clients with the analysis of and strategies relating to infringement, validity and enforcement positions in a variety of contexts.

Monica-TalleyMonica Riva Talley
Monica Talley is a director in the Mechanical Group at intellectual property specialty law firm Sterne, Kessler, Goldstein & Fox. She has over 15 years of experience protecting some of the world's most recognizable brands. She is known for respecting the business motivations that drive the selection of trademarks, and for providing clients with creative, cost-effective, and practical solutions that work within both business and legal parameters. She specializes in trademark portfolio analysis and management, counseling, clearance, and prosecution.

Ms. Talley has been involved with every aspect of trademark, service mark, trade name, unfair competition, false advertising, and trade dress litigation. She also has significant expertise in opposition and cancellation proceedings before the Trademark Trial and Appeal Board. She has handled a wide range of Internet trademark and domain name disputes; filed arbitration complaints under ICANN's Uniform Dispute Resolution Policy; negotiated resolutions to disputes; and drafted advantageous settlement and coexistence agreements.

Webinars in This Series