Navigating Intellectual Property Challenges in Contractual Agreements
This course provides a comprehensive overview of the critical issues surrounding intellectual property (IP) in contractual agreements. Participants will learn to identify and navigate the potential hazards in IP licensing, including defining key IP terms, understanding the implications of IP within contracts, and addressing common challenges faced by both licensors and licensees. The course will also cover practical strategies for drafting, negotiating, and managing IP-related provisions to bridge gaps and mitigate risks. Through case studies and practical examples, participants will gain the knowledge and skills necessary to effectively handle IP in various contractual contexts.
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Partner at Holland & Knight LLP
Charles A. Weiss is a partner in Holland & Knight's New York office and head of the New York Intellectual Property Group. Combining accomplished trial lawyer with seasoned transactional counselor, Mr. Weiss concentrates his practice on technology-driven litigation and transactions, primarily in pharmaceutical, biotechnology and adjacent fields. He also counsels clients on questions of patent validity and infringement, provides a litigator's perspective on prosecution matters, and assists with regulatory and compliance matters. Mr. Weiss litigates patent, trade secret, license, and false advertising cases in diverse technical areas. He has handled cases over the years involving expression of recombinant proteins and antibodies, controlled release pharmaceuticals, medical diagnostic agents, endocrine and hormone products, nutritional supplements, industrial control systems, food chemistry, nucleic acid diagnostic assays, and commercial detergents. He also has extensive experience in the investigation of product counterfeiting and pursuit of those responsible. In addition, Mr. Weiss has a diverse non-litigation practice focused on supporting transactions in which a substantial value is attributed to a party's intellectual property position, such as its ability to exclude competitors or to bring its product to market free of meritorious infringement claims by others. He negotiates and drafts licenses and other agreements, including commercial collaboration, joint research and product acquisition agreements, conducts due diligence and advises on the strength or vulnerability of a target company's patent positions. Mr. Weiss also has experience in commercial matters, including corporate and securities transactions, contract litigation, insurance and banking disputes, construction litigation, accounting and attorney malpractice, and investigations of employee malfeasance and fraud. His pro bono clients include rare disease charities, including Mila's Miracle Foundation. Mr. Weiss is an associate adjunct professor at Brooklyn Law School, where he designed and teaches a course on food and drug law. Mr. Weiss has been recommended in Intellectual Asset Management (IAM) Patent 1000 since 2011. The 2019 publication quotes that “Beyond his uncanny predictive accuracy, Charles Weiss has a superb ability to cut through the noise in litigation to keep everything and everyone on track toward the ultimate business goal. You can't get better than him for representation in the most demanding, high-impact pharmaceutical litigations and transactions. The hugely popular healthcare and life sciences whizz provides shrewd leadership to Holland & Knight's New York IP group.” In 2018, it wrote: "Charles Weiss is an outstanding lawyer. He focuses on intellectual property, particularly patents, but what sets him apart from others is his ability to cross boundaries and advise on other legal issues that affect his clients' business goals. “He is appropriately guarded in offering advice on what he recognises as a 'business issue', but at the same time does not hesitate to do so where he feels he has value to add, or when he feels the client might be missing something. Some lawyers either do not offer such advice, cannot do so meaningfully or are so enamoured with business they lose focus on the legal issues – Charles strikes the perfect balance. Similarly, in litigation, he is aggressive when he needs to be, but always reasonable. When it makes sense to concede a point, he does so in such a way that it cannot be seen as a sign of weakness. In court, he makes a very effective advocate and is clear, credible and to the point.” The Holland & Knight partner is somewhat of a celebrity among dynamic innovators in the pharmaceutical, chemical and biotech areas."
