Legal Courses for In-house Lawyers
International technology licensing agreements
This two-day seminar will give you practical advice on understanding, drafting, interpreting and using international technology licensing agreements.
26 April 2010
2 Days
-
GBP 1149 + VAT
Membership Price: 574.5 + VAT London
9.00 - 9.30
5.00
34400
Why you should attend?
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 seminar 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
- Introduction to IPR
- What is a licence?
- Licensing distinguished from other forms of Agreement
- The value of IPR
- Why license out?
- Why license in?
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
- Business increasingly differentiated by its technology
- World becoming more ‘e’ and connected by the day
- Value of the IP
- CASE STUDY: An introduction to valuations in a company purchase/sale
Royalty terms
- Royalty structures
- Royalty rates
- Factors affecting royalty calculation
- Royalty reductions
- Duration of payment
- Mechanics – auditing and payment
European and UK perspective
- Interaction between EU and UK law
- Who makes EU law?
- Competition law and block exemptions
- Technology Transfer Block Exemption
European & UK perspective (continued)
- Dealing with the costs of IPR costs and patent maintenance costs
- Managing litigation costs
- Insurance and clubs
- Licensing clauses to deal with litigation costs
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
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.
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.
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.
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.
Dai Davis is a Technology Lawyer. He has degrees in both Physics and Computing Science. As well as being a solicitor, he is a qualified Chartered Engineer and member of the Institution of Engineering and Technology. He is now a partner at Brooke North LLP, having previously held the posts of National Head of Information Technology law and National Head of Intellectual Property law at Eversheds. Dai advises clients on intellectual property, computer and technology law subjects.
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.
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
