Joseph Yang - Speaking & Publications

2012

  • Program co-chair, Understanding the Intellectual Property License 2012, Practising Law Institute, San Francisco, CA, Dec. 10-11, 2012.

  • Program co-chair, Advanced Patent Licensing 2012, Practising Law Institute, San Francisco, CA, Oct. 22, 2012.

  • "IP Considerations in Acquiring/Selling Technology Companies," Acquiring or Selling the Privately Held Company 2012, Practising Law Institute, San Francisco, CA, May 8, 2012.

  • "Recent Case Law Relevant to Patent Monetization," IP Monetization 2012, Practising Law Institute, San Francisco, CA, April 12, 2012.

  • Program co-chair, Advanced Licensing Agreements 2012, Practising Law Institute, February 23-24, 2012 (SF), March 22-23, 2012 (NY), April 26-27, 2012 (Chicago).

  • "IP Allocation and Deallocation in Collaborative Transactions," Advanced Licensing Agreements 2012, Practising Law Institute, February 23, 2012 (SF), March 22, 2012 (NY), April 26, 2012 (Chicago).

  • "Best Practices for Patent and Technology Licensing," Advanced Licensing Agreements 2012, Practising Law Institute, February 23, 2012 (SF), March 22, 2012 (NY), April 26, 2012 (Chicago).

  • "Optimizing Patents for Licensing and Enforcement: Common Pitfalls and Best Practices," Silicon Valley IP Law Association, Palo Alto, CA, February 28, 2012.

  • "New Developments in the Law of IP/Technology Licensing," Hawaii State Bar Association, Honolulu, HI, February 16, 2012.

2011

  • "Patent Licensing - 2011 Year in Review," Licensing Executives Society - Silicon Valley Chapter, Palo Alto, CA, December 14, 2011.

  • "Introduction to Patent/Technology Licensing," Understanding the Intellectual Property License 2011, Practising Law Institute, San Francisco, CA, Dec. 12, 2011.

  • Program co-chair, Advanced Patent Licensing 2011, Practising Law Institute, San Francisco, CA, October 24, 2011.

  • "A Mock Patent License Negotiation," Advanced Patent Licensing 2011, Practising Law Institute, San Francisco, CA, October 24, 2011.

  • "Structuring Patent Transactions," Advanced Patent Licensing 2011, Practising Law Institute, San Francisco, CA, October 24, 2011.

  • "IP Traps for the Unwary in Mergers: How to Identify & Deal with those Skeletons in the Closet, " Association of Corporate Counsel,, September 13, 2011 (San Francisco), September 14, 2011 (Palo Alto).

  • "Recent Case Law Relevant to Patent Monetization," IP Monetization 2011, Practising Law Institute, San Francisco, CA, May 5, 2011.

  • Program co-chair, Advanced Licensing Agreements 2011, Practising Law Institute, February 24-25, 2011 (SF), March 24-25, 2011 (NY), April 27-28, 2011 (Chicago).

  • "IP Issues in Strategic Alliances and Joint Ventures," Advanced Licensing Agreements 2011, Practising Law Institute, February 24, 2011 (SF), March 24, 2011 (NY), April 27, 2011 (Chicago).

  • "Avoiding Common Mistakes in Patent and Technology Licensing," Advanced Licensing Agreements 2011, Practising Law Institute, February 24, 2011 (SF), March 24, 2011 (NY), April 27, 2011 (Chicago).

2010

  • "Anatomy of a Patent License," Understanding the Intellectual Property License 2010, Practising Law Institute, San Francisco, CA, December 13, 2010.

  • Program co-chair, Advanced Patent Licensing 2010, Practising Law Institute, September 30, 2010 (Chicago), October 25, 2010 (SF), November 11, 2010 (NY).

  • "Structuring Patent-Driven Transactions," Advanced Patent Licensing 2010, Practising Law Institute, September 30, 2010 (Chicago), October 25, 2010 (SF), November 11, 2010 (NY).

  • "Mock Negotiation of a Patent License Agreement," Advanced Patent Licensing 2010, Practising Law Institute, New York, NY, November 11, 2010.

  • "Live Mock Negotiation: Infringement Indemnity Issues," Software Licensing 2010, American Conference Institute, San Francisco, CA, September 21, 2010.

  • "Dressing for Success: What Clients Need to Know (and How to Tell Them) About Protecting Intellectual Property, Forming Key Contracts and Finding Venture Capital," American Bar Association Annual Meeting, San Francisco, CA, August 7, 2010.

  • "Recent Case Law Relevant to Patent Monetization," IP Monetization 2010, Practising Law Institute, San Francisco, CA, May 6, 2010.

  • "In-House Panel on Patent Monetization," IP Monetization 2010, Practising Law Institute, San Francisco, CA, May 6, 2010.

  • "A Case of Complementary Opposites: Technology Versus Patent Licensing," Negotiating and Drafting IP License Agreements, State Bar of California, San Francisco, CA, April 9, 2010.

  • Program co-chair, Advanced Licensing Agreements 2010, Practising Law Institute, February 25-26, 2010 (SF), March 25-26, 2010 (NY), April 26-27, 2010 (Chicago).

  • "Best Practices for Strategic Alliances and Joint Ventures," Advanced Licensing Agreements 2010, Practising Law Institute, February 25, 2010 (SF), March 25, 2010 (NY), April 26, 2010 (Chicago).

  • "Best Practices for Patent and Technology Licensing," Advanced Licensing Agreements 2010, Practising Law Institute, February 25, 2010 (SF), March 25, 2010 (NY), April 26, 2010 (Chicago).

  • "The Current State of Patent Monetization: 2010," Hawaii State Bar Association, Honolulu, HI, February 8, 2010.

2009

  • "Mock Negotiation of a Software License Agreement," Software Licensing Agreements, American Conference Institute , San Francisco, CA, October 6, 2009.

  • Program co-chair, Advanced Patent Licensing 2009, Practising Law Institute, San Francisco, CA, September 14-15, 2009.

  • "Business and Legal Considerations in Patent Transactions," Advanced Patent Licensing 2009, Practising Law Institute , San Francisco, CA, September 14, 2009.

  • "The IP Lawyer’s Guide to Mergers & Acquisitions," Patent Basics 2009, Practising Law Institute, San Francisco, CA, June 9, 2009.

  • "How is Patent Jurisprudence Affecting Patent Monetization?," IP Monetization 2009, Practising Law Institute , San Francisco, CA, May 13, 2009.

  • "Recent Case Law Affecting Patent Licensing," Michigan Intellectual Property Law Association, Detroit, MI, April 8, 2009.

  • "Business Considerations of a License Agreement," Patent Law Institute, Practising Law Institute, San Francisco, CA, March 23, 2009.

  • Program co-chair, Advanced Licensing Agreements 2009, Practising Law Institute, February 26-27, 2009 (SF), March 26-27, 2009 (NY), April 27-28, 2009 (Chi).

  • "Managing Your Patent Portfolio to Maximize Licensing Opportunities," Advanced Licensing Agreements 2009, Practising Law Institute, February 27, 2009 (SF), March 27, 2009 (NY), April 28, 2009 (Chi).

  • "IP Issues in Joint Ventures and Strategic Alliances," Advanced Licensing Agreements 2009, Practising Law Institute, February 26, 2009 (SF), March 26, 2009 (NY), April 27, 2009 (Chi).

  • "Avoiding Common Mistakes and Patent and Technology Licensing," Advanced Licensing Agreements 2009, Practising Law Institute, February 26, 2009 (SF), March 26, 2009 (NY), April 27, 2009 (Chi).

  • "Conducting IP Transactions with Distressed Companies," Silicon Valley IP Law Association, Palo Alto, CA, February 18, 2009.

2008

  • "License Agreement Negotiation Tactics: Overcoming Common Contract Formation Stumbling Blocks," Software Licensing Agreements, American Conference Institute, San Francisco, CA, October 21-22, 2008.

  • "From Research to Reality: Business Meets Technology at Caltech," Alumni College, California Institute of Technology, Pasadena, CA, September 12-13, 2008.

  • "Bankruptcy Issues for IP Lawyers," Summer IP Institute, Michigan State Bar, Mackinac Island, MI, July 19, 2008.

  • Program co-chair, Advanced Patent Licensing 2008, Practising Law Institute, May 28, 2008 (NY), June 11, 2008 (SF).

  • "Structuring and Negotiating Patent Purchase Deals," Advanced Patent Licensing 2008, Practising Law Institute, May 28, 2008 (NY), June 11, 2008 (SF).

  • Program co-chair, Negotiating, Drafting and Executing Technology Licensing Agreements, American Conference Institute, San Francisco, CA, April 29-30, 2008.

  • "Understanding the Licensee Landscape: How to Choose and Market to Potential Licensees," Negotiating, Drafting and Executing Technology Licensing Agreements, American Conference Institute, San Francisco, CA, April 29, 2008.

  • "Top Mistakes in Patent Licensing," 2008 World Technology Law Conference and Annual Meeting, International Technology Law Ass'n., Las Vegas, NV, April 25, 2008.

  • Program co-chair, Advanced Licensing Agreements 2008, Practising Law Institute, February 28-29, 2008 (SF), March 27-28, 2008 (NY), April 21-22, 2008 (Chi).

  • "IP Issues in Strategic Alliances," Advanced Licensing Agreements 2008, Practising Law Institute, March 27, 2008 (NY), April 21, 2008 (Chi).

  • "The Law and Business of Patent and Technology Licensing, " Advanced Licensing Agreements 2008, Practising Law Institute, San Francisco, CA, February 28, 2008.

  • Program chair, Drafting and Negotiating Patent License Agreements 2008 - Advanced Strategies and Techniques, West Legalworks, Austin, TX, Feb. 13, 2008.

  • "How Recent Case Law Has (and Hasn't) Changed Patent Licensing," Drafting and Negotiating Patent License Agreements 2008 - Advanced Strategies and Techniques, West Legalworks, Austin, TX, Feb. 13, 2008.

  • "What Lawyers Need to Know About the Business of Selling and Licensing Patents," Patent Law Institute: The Practice Impact of Recent Developments, Practising Law Institute, San Francisco, CA, January 28, 2008.

2007

  • "Recent Supreme Court Decisions Affecting Patent Licensing," Hawaii State Bar Association, Honolulu, HI, November 19, 2007.

  • "Common Mistakes in Consulting Agreements," Advanced Patent Licensing 2007, Practising Law Institute, San Francisco, CA, June 13, 2007.

  • "Common Mistakes in Patent License Agreements," Drafting and Negotiating Patent License Agreements 2007 - Advanced Strategies and Techniques, West Legalworks, Palo Alto, CA, May 24, 2007.

  • "Patent Issues in M&A Transactions," Patent Basics for the Nonspecialist, Practising Law Institute, San Francisco, CA, April 11, 2007.

  • Program co-chair, Advanced Licensing Agreements 2007, Practising Law Institute, March 1-2, 2007 (SF), March 29-30, 2007 (NY).

  • "Strategic Alliances," Advanced Licensing Agreements 2007, Practising Law Institute, New York, NY, March 29, 2007.

  • "Patent Licensing: Technology Transfer, Freedom to Operate, or Arms Merchant?," Spring Meeting, Section on Business Law, American Bar Association, Washington, D.C., March 17, 2007

  • "Patent & Technology Licensing," Advanced Licensing Agreements 2007, Practising Law Institute, San Francisco, CA, March 1, 2007.

  • "The Business of Patent Licensing, " Winter Meeting 2007, Licensing Executives Society, San Francisco, CA, February 23, 2007.

  • "Business Considerations of a License Agreement," Patent Law Institute: The Practice Impact of Recent Developments, Practising Law Institute, San Francisco, CA, January 30, 2007.

2006

  • "Understanding the Patent/Technology Sales Cycle - The Importance of Providing Value Licensing," 2nd Annual Hawaii Intellectual Property Licensing Conference, Honolulu, HI, October 20, 2006.

  • Program co-chair, Optimizing Software Licensing Agreements, American Conference Institute, San Francisco, CA, October 4-5, 2006.

  • "Crafting the Agreement: Custom-Made and Modified Software," Optimizing Software Licensing Agreements, American Conference Institute, San Francisco, CA, October 4-5, 2006.

  • "Common Mistakes in Consulting Agreements," Advanced Patent Licensing 2006, Practising Law Institute, San Francisco, CA, June 14, 2006.

  • "Exploiting Your Patent Portfolio Through Licensing," Corporate Counsel's Guide to Software, Internet & Telecom Patents , American Conference Institute, San Francisco, CA, May 25, 2006.

  • "The IP Lawyer's Role in M&A - An Insider's Guide," Patent Law for the Nonspecialist, Practising Law Institute, San Francisco, CA, April 6, 2006.

  • Program co-chair, Advanced Licensing Agreements 2006, Practising Law Institute, March 6-7, 2006 (NY), March 16-17, 2006 (SF).

  • "Patent Licensing," Practising Law Institute, March 16, 2006 (SF).

  • "Litigation Planning for Licensing Attorneys," Practising Law Institute, March 7, 2006 (NY), March 17, 2006 (SF).

  • "Bridging the Gap:  What IP Counsel Need to Know about Bankruptcy and Restructuring," Michigan Intellectual Property Law Association, Detroit, MI, February 13, 2006.

  • "Intellectual Property Transactions," Nuts and Bolts of IP Law, Continuing Education of the Bar, State Bar of California, San Francisco and Santa Clara, CA, January 13, 2006 (SF), January 27, 2006 (Santa Clara).

2005

  • "Tech Transfer from Hawaii Through Patent Licensing or Sale," Hawaii State Bar Association, Honolulu, HI, November 29, 2005.

  • "Allocation of Ownership and Rights in Software Development and Joint Venture Deals," The Practical and Tactical Art of the Deal in Software Licensing Agreements, American Conference Institute, San Francisco, CA, October 20, 2005.

  • "Patent Claim Construction in the Wake of Philips,"  Practising Law Institute, San Francisco, CA, August 11, 2005.

  • "Consulting and Know-How Agreements," Patent and High Technology Licensing 2005, Practising Law Institute, San Francisco, CA, June 29, 2005.

  • "Intellectual Property & Technology Licensing," Michigan Intellectual Property Law Association, Detroit, MI, April 12, 2005.

  • "Lawyering at the Patent-Corporate Interface:  Handling Patent Issues in Mergers & Acquisitions," Patent Law for the Nonspecialist, Practising Law Institute, San Francisco, April 6, 2005.

  • Program co-chair, Advanced Licensing Agreements 2005, Practising Law Institute, March 7-8, 2005 (NY), March 17-18, 2005 (SF).

  • "Top Ten Mistakes in Patent Licensing," Practising Law Institute, March 7-8, 2005 (NY), March 17-18, 2005 (SF).

  • "Litigation Planning for Licensing Attorneys," Practising Law Institute, March 7-8, 2005 (NY), March 17-18, 2005 (SF).

  • "What Corporate Counsel Should Know About IP Planning for Technology-Driven Alliances," The Practical Lawyer, February & April, 2005.

  • "IP Counseling for Corporate Partnering," The Computer and Internet Lawyer, January, 2005.

2004

  • "IP Management Strategies for Technology Alliances," Berkeley Center for Law & Technology, U.C. Berkeley School of Law, Berkeley, CA, September, 2004.

  • "Bankruptcy Law Issues in Intellectual Property Transactions," Michigan State Bar, Summer IP Institute, July 22-24, 2004.

  • "Navigating the Federal Circuit's Markman Jurisprudence," How to Prepare and Conduct Markman Hearings 2004, Practising Law Institute, San Francisco, July 21, 2004.

  • "Negotiation of a Mock Patent License Agreement," Patent and High Technology Licensing 2004, Practising Law Institute, San Francisco, June 30, 2004.

  • "Structuring, Drafting and Negotiating Software License Agreements," Patent and High Technology Licensing 2004, Practising Law Institute, San Francisco, June 30, 2004.

  • "Duty of Disclosure to the Patent Office – Who, What, When & How?," Advanced Patent Law Seminar, Practising Law Institute, San Francisco, June 21-22, 2004.

  • "Bridging the Corporate-IP Gap: The Top Ten Mistakes in Structuring License Agreements," American Intellectual Property Law Association, Spring Meeting, Dallas, TX, May 14, 2004

  • Program co-chair, Advanced Licensing Agreements 2004, Practising Law Institute, March 8-9, 2004 (NY), March 18-19, 2004 (SF).

  • "IP Counseling for Collaborative Transactions – An Ounce of Prevention, a Pound of Cure?," Advanced Licensing Agreements 2004, Practising Law Institute, March 8, 2004 (NY), March 18, 2004 (SF).

  • "Analysis of a Complex Content License Agreement," Advanced Licensing Agreements 2004, Practising Law Institute, San Francisco, March 19, 2004.

  • Organizing committee, Winter Meeting 2004, Licensing Executives Society, San Francisco, February 11-13, 2004.

  • "You Want How Much?! – Elements of a Business Savvy IP Strategy," Winter Meeting 2004, Licensing Executives Society, San Francisco, February 11-13, 2004.

  • "Commercializing Technology & Intellectual Property – What Entrepreneurs Need to Know About Licensing," Information Sciences Seminar, California Institute of Technology, Pasadena, January 28, 2004.

  • "IP Ownership and Usage Rights in Joint Developments – Alternatives to Joint Ownership," The Licensing Journal, January, 2004.

2003

  • "Intellectual Property & Technology Law 2003 – The Year in Review," Silicon Valley Association of General Counsel, December 10, 2003

  • "Enforcement of Jointly Owned Patents – Traps for the Unwary," The IP Litigator, November/December, 2003.

  • "Practical Aspects of Information Technology Outsourcing," Ninth Annual Institute for Intellectual Property Law, Practising Law Institute, Los Angeles, November 21, 2003.

  • "How to License Your Know-How and Trade Secrets Without Jeopardizing Them," Licensing Executives Society, Annual Meeting, September, 2003.

  • "Bridging the Corporate-IP Gap:  Special Considerations for Negotiating IP & Technology Agreements" Silicon Valley Association of General Counsel, August 15, 2003.

  • "Negotiating Minefields in IP/Technology Licenses, Joint Ventures, and Strategic Alliances," Michigan State Bar, Summer IP Institute, Mackinac Island, MI, July 19, 2003.

  • "The Federal Circuit's Markman Jurisprudence – Patchwork Quilt or Jigsaw Puzzle?," How to Prepare and Conduct Markman Hearings 2003, Practising Law Institute, July 9, 2003 (NY), July 23, 2003 (LA).

  • "Recent Case Law on the Doctrine of Equivalents – Where We Stand in 2003," Advanced Patent Law Seminar 2003, Practising Law Institute, San Francisco, June 23-24, 2003.

  • Book Chapter: "Intellectual Property Strategy in Joint Ventures," in Start-Up & Emerging Companies:  Planning, Financing & Operating the Successful Business, Law Journal Press, June, 2003.

  • Program Co-Chair, Advanced Licensing Agreements 2003, Practising Law Institute, March 10-11, 2003 (NY), March 20-21, 2003 (SF).

  • "How to Handle IP Rights in Joint Ventures – Allocation, Enforcement, and Exit Strategies," Advanced Licensing Agreements 2003, Practising Law Institute, March 10, 2003 (NY), March 20, 2003 (SF).

  • "Analysis of a Complex Content License Agreement," Advanced Licensing Agreements 2003, Practising Law Institute, San Francisco, March 20, 2003.

  • Faculty, Patent Bar Review, Practising Law Institute, San Francisco, February 12, 2003.

  • "Common Ownership Issues – Are You Living at the Mercy of Your Co-Owners?," Guiding the Board Through the Labyrinth of Corporate IP Transactions - A Multi-Disciplinary Approach, American Intellectual Property Law Association, 26th Mid Winter Institute, January 23, 2003.

2002

  • "The Top Ten Mistakes when Structuring Technology License or Alliance Agreements," Licensing Executives Society, Annual Meeting, September 24, 2002.

  • "Avoiding Pitfalls of IP Joint Ownership," Stories from the Front: Growing a Successful Licensing Program, Licensing Executives Society, Annual Meeting, September 24, 2002.

  • "Prosecution History Estoppel After the Festos – Treacherous Shoals, Muddy Waters, and Safe Harbors," Patent Practice in the Aftermath of Festo and Vornado, Practising Law Institute, San Francisco, September 18, 2002.

  • "An Overview of Technology and IP Licensing," Online CLE Presentation, www.cognistar.com, September, 2002.

  • Faculty, Patent Bar Review, Practising Law Institute, San Francisco, August 21, 2002.

  • "A Unified Framework for Claims Construction," How to Prepare and Conduct Markman Hearings 2002, Practising Law Institute, July 22, 2002 (SF), July 31, 2002 (NY).

  • "The Festo Decision from the U.S. Supreme Court – The Last Word on Prosecution History Estoppel?," San Francisco Intellectual Property Law Association, July 9, 2002.

  • "Recent Case Law on the Doctrine of Equivalents," Advanced Patent Law Seminar 2002, Practising Law Institute, San Francisco, June 7, 2002.

Speaking