Negotiating IP Licensing Agreements in Israel

About the Course: Much of the world’s most compelling technologies originate in Israel. According to recent statistics, Israel has 69% more patents per capita than the G-20 nations. Israelis have won more Nobel prizes than any other nation per capita. Israel has more PhD’s per capital and produces more scientific publications per capita than any country in the world. Thus, it is no surprise that companies from all over the world seek to license in technology produced in Israel. This session discusses the nuances of achieving the most profitable results from licensing Israeli technology, trade secrets, trademarks and copyrights. The following are among the issues discussed: Rights and obligations associated with exclusive, non-exclusive and “sole” licenses Implications of recordation requirements with the Israeli Patent Office Management of jointly-owned patents, sublicenses, and compulsory licenses Withholding taxes on royalties and payments pursuant to research development agreements Compensation of inventors when royalties are received by employers Best practices for structuring trade secret licenses Ability to sublicense copyright agreements Right of suit issues relative to trademarks Implications of Most Favored Licensing provisions under IP and Contract Law Insight into fundamental contract provisions such as “consideration”, “good faith”, and “clauses presumed to be disadvantageous” Impact of technology funded by Israel’s Office of Chief Scientist Course Leader: Neil Wilkof, Team Leader – Intellectual Property, Herzog, Fox & Neeman Neil Wilkof heads the intellectual property and information technology team. In addition to intellectual property, Neil specializes in technology transfer and computer and Internet law. Neil is a frequent lecturer and has taught law and business courses at Herzliya Interdisciplinary Center (Israel); Haifa University (Israel); Bar-Ilan University; and, ITT Chicago-Kent School of Law. Neil is a prolific writer. He is a frequent contributor to the IP Finance blog. His books include Trade Mark Licensing and Intellectual Property in the Global Marketplace.
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