Legal Courses for In-house Lawyers
International technology licensing agreements conference
This conference offers an intensive briefing on all the key factors to be taken into account when dealing with technology licensing agreements – whether as licensor or licensee. It will give sound practical advice and guidance on the legal and commercial skills needed to ensure a successful deal.
7 October 2008
2 Days
-
GBP 1149 + VAT
Membership Price: 574.5 + VAT London
9.00-9.30
5.00
26527
Why you should attend this training conference
International technology licensing is a business format which is frequently used for business expansion across national boundaries.
This conference offers an intensive briefing on all the key factors to be taken into account when dealing with technology licensing agreements – whether as licensor or licensee. It will give sound practical advice and guidance on the legal and commercial skills needed to ensure a successful deal.
The conference speakers are all experienced practitioners and the approach taken throughout the conference will be practical and interactive. The conference includes hands-on workshop sessions and ample time will be allocated for questions and discussion throughout the programme.
Who should attend?
- In-house lawyers
- Commercial and contract managers
- Business development managers
- Product managers
- Licensing executives
Seven key benefits
This conference will help you:
1. Understand how to use licensing as a tool for international business expansion
2. Enter into the right agreements and negotiate fair contract terms
3. Understand the wide range of issues that need to be considered
4. Identify the legal pitfalls
5. Terminate unsuccessful agreements in the best possible way
6. Understand the regulations that could have an impact on your agreements
7. Discover the many ways in which you can exploit your technology
Programme
DAY ONE
Introduction to licensing
- What is a license?
- Why license at all?
- Why license out? Why license in?
- Intro to IP
- The business of licensing
Different forms of transfer
- Exclusive license and non-exclusive license
- Sole license/joint venture and/or licensing
- Trading and/or licensing
- Supply of technical know-how and other trade secrets
- Supply of machinery, components and materials
- Supply of technical services
- Guarantees and performance tests
- Choosing what to license
Valuation of technology
- Value – what does this mean?
- Assessing value
- Valuation theories
- Basis of the royalty and other license terms
Royalty terms
- Royalty structures
- Royalty rates
- Factors affecting royalty calculation
- Royalty reductions
- Duration of payment
- Mechanics – auditing and payment
European & UK perspective
- Overview of the TTBE
- The TTBE in the UK and in the EU
- Interaction between the Commission and the UK Courts
- Current UK law
US perspective
- Relevant law provisions
- Antitrust guidelines
- Comparison with European law
Questions and discussion
DAY TWO
Practicals of licensing
- Seeking and finding licenses
- Striking the deal
- Negotiation
- Management of licenses
Workshop: Licensing
Liability
- Governing law
- Liability irrespective of warranties
- Warranties
- Limitation
Dispute Resolution - what happens when deals go wrong
- Why do deals go wrong
- Contractual dispute resolution - project management, escalation, expert determination and exits
- Pros and cons of:
- mediation
- arbitration
- court proceedings
- jurisdiction issues
International technology licensing - case study
Licensing alliances with academic institutions
- Why work with academics?
- Industrial vs academic values
- Intellectual property rights – creation, ownership, valuation
- Potential problems and their resolution
University licensing terms in the Lambert Agreements
- Background to the Lambert Agreements
- Model Agreement 1
- Model Agreement 2
- Model Agreement 4
Conference chairmen
Colin Hunsley is a Director in Intellectual Property Commercialisation for Clearview IP Ltd. He worked at BTG for 19 years where he gained considerable experience in commercialising new technologies. He has also worked with a number of UK universities and hospitals to help identify new inventions and advise on ways of taking these to the market place. He has significant experience of patent licensing in Asia.
Stephen Powell is a partner at Williams Powell, a London-based firm of British and European Patent and Trademark Attorneys. He has specialised in the electrical and electronic fields; handling patent applications relating to mechanical and software inventions and also trademarks and design cases. He represents a wide range of clients, including multinational companies, SMEs and universities.
Presenters
Noel Byrne is a Senior Visiting Fellow at the University of Melbourne and at the University of Monash, Australia; and an occasional lecturer at the Intellectual Property Academy, Singapore. He advises several major companies and research organisations on intellectual property law, including technology licensing and R&D contracts, and on general commercial contracts.
Dr Frederick Ch’en is a Managing Associate (Solicitor) in Linklaters’ Intellectual Property Department and a member of the firm’s healthcare group, where he advises on intellectual property, licensing, commercial and regulatory matters for the healthcare, pharmaceutical and biotechnology sectors. He is also an attorney at-law (California), a US patent attorney and a chartered biologist.
Piers Clayden has been a Partner in Manches since 2007. Piers advises on a wide range of commercial agreements, particularly those with an intellectual property element. He also advises on the legal issues surrounding doing business over the Internet and also in relation to outsourcing of business functions.
John Hull is a partner in the London office of Eversheds LLP. He undertakes a range of IP litigation including patent, confidential information and trade mark litigation and advises on data protection issues. John is experienced in non-contentious intellectual property, IT and related corporate support.
Romek Matyszczyk is a Partner in the London office of Grant Thornton UK LLP and is Co- Head of Valuation Services.
Fiona Nicolson is a Solicitor specialising in Intellectual Property matters which she has practised for over 18 years. She has recently joined Bristows as a partner in their IP and commercial transactions team and focuses on assisting clients to commercialise IP particularly by way of international licensing. She works across a number of fields including life sciences, IT, academia, consumer brands and engineering.
Jennifer Pierce is a Partner at Charles Russell Solicitors who specialises in the commercial exploitation of intellectual property. She acts for clients in a variety of industries including chemicals, biotechnology, electrical and mechanical engineering, as well as brand owners, publishers and designers.
Richard Vary is a solicitor advocate and Senior IPR Litigation Counsel for Nokia. He manages Nokia's European patent litigation, and litigation arising from technology licensing. He trained at Linklaters where he advised on licensing transactions in a number of industry sectors including pharmaceutical, energy, automotive, and aerospace.
Continuing professional development
Kaplan Hawksmere is approved as an external course provider by the Solicitors' Regulation Authority (Solicitors' Regulation Authority reference No. DI/HAWK).Attending this conference qualifies you for 12 CPD hours.This event is also accredited by the BAR Council Standards Board and qualifies you for 12 CPD hours. Certificates of attendance will be given to all delegates, so that they may claim appropriate credits in respect of other continuing professional development requirements.
In-house learning and development solutions
Please call Gary Mee direct on 020 7960 5616
Sponsorship opportunities
Please call Simon Owen on 020 7960 5663
