Disclosing IP in Business – “Trust Everybody, but Cut the Cards” (Live MBHB Webinar)

There are many situations where corporations and individuals need to be able to provide IP to third parties, including licensing negotiations, joint ventures, joint development efforts and supply arrangements. Negotiating a confidentiality agreement, or a confidentiality provision for a larger agreement, is in many cases absolutely necessary to preserve trade secret rights and know-how. But confidentiality agreements carry risks for both sides, and often bring unintended consequences. Enforcement is an issue, as is the need for actively monitoring potential violations. Where disclosed confidential information ends up in someone else’s patent applications, the USPTO’s new charter to conduct derivation actions under the AIA present yet another means to rectify a problem.

Join us as we delve into the theory and legal implications of these and other issues:

  • Confidentiality Agreements – negotiation, preparation and risks
  • Ownership of follow-on IP
  • Monitoring
  • Enforcement – options, risks and outcomes
  • Derivation Actions – procedures, scope and appeals


Presenters: MBHB partners Grantland G. Drutchas and James L. Lovsin

Access an archived audio version of this webinar here. NOTE: MCLE credit is not available for this archived recording. 

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.