Drafting International Intellectual Property Agreements

Focus on the drafting skills and legal and commercial issues to be considered when drawing up international IP agreements

9 Nov 2018

& 16 May 2019 , 14 Nov 2019

GBP 699
EUR 979
USD 1,090

Book now

Course overview

The world’s national laws surrounding intellectual property have become more and more consistent over recent years but, whilst this is helpful to a large extent, it also sets the scene for numerous misunderstandings and disputes.

This practical course has been designed to focus on the drafting skills and legal and commercial issues to be considered when drawing up international IP agreements. If you are doing business in a complex multi-jurisdictional environment you need to know how to address difficult situations when designing and negotiating IP related agreements in cross-border projects.

Why you should attend

Increase your knowledge of the legal and commercial issues surrounding international IP agreements

Improve your drafting skills by understanding the risks and opportunities

Receive an update on the laws affecting international IP agreements

Understand the potential impact of Brexit on your IP agreements

Complete practical exercises on drafting clauses to consolidate your learning

Compare and discuss your experiences with other delegates

Who should attend

  • Patent attorneys
  • In-house lawyers
  • Legal executives
  • Commercial managers
  • Clinical contract specialists
  • Product development managers
  • Research managers
  • Others who are involved in drafting or managing commercial IP agreements

Programme day one

Introduction

  • Overview of the landscape for international IP agreements
  • Differences and similarities in national laws, commercial practices, drafting styles and template agreements

The legal framework for international IP agreements: national and international differences and similarities

  • Specific national and supranational IP laws affecting transactions, including laws governing initial ownership, employee rights, commissioned works, assignment and licensing
  • IP laws within the framework of national property and contract laws
  • Implied terms in IP agreements under national laws
  • Constraints on express terms under national laws

Dealing with different types of IP (or quasi IP):

  • Patents
  • Trade marks
  • Trade secrets
  • Domain names

Drafting key terms in IP agreements: grant of rights

  • Technical definitions
  • Licences: exclusive, non-exclusive, sole, etc
  • Sub-licensing and sub-contracting
  • Assignments
  • Options
  • Improvements
  • Grant-backs

Practical exercises on drafting international IP agreements

Differences in national and industry-sector practices and commercial expectations: How these affect the terms of IP agreements

  • Drafting styles, length and content of agreements
  • Use of ‘international’ template agreements
  • Some terms that are considered ‘standard’ but vary between countries and industry sectors
  • To what extent are the detailed terms understood or considered important at a commercial level?

Dispute resolution in international IP agreements

  • Contentious IP contracts: when IP contracts go wrong!

Selected ‘legal’ clauses in international IP agreements

  • Use of legal language: why it needs to be reviewed by a local lawyer
  • Warranties, liability and indemnities
  • Entire agreement clauses
  • Assignment and change of control

Financial terms in international IP agreements

  • Upfront payments, milestones and royalties
  • Royalty-stacking
  • Payment terms, reporting and auditing

Brexit proofing your agreements

Presenters

Sally Shorthose

Sally Shorthose is one of the leading intellectual property (IP) partners at Bird & Bird. She provides a full range of intellectual property commercial advice and support to her clients, including licensing, partnering and exploitation agreements, research, development and marketing collaborations. She also frequently advises clients on regulatory and ‘freedom to operate’ matters, and manages significant due diligence matters. As a transactional intellectual property lawyer, she provides advice in relation to the protection and exploitation of a full range of IP rights, both in stand-alone transactions and as part of an acquisition, divestment or investment activity.
Before joining Bird & Bird in 2006, Sally was head of IP and Life Sciences at Eversheds, and prior to that she spent 11 years working in-house firstly as senior legal advisor at ICI/Zeneca and latterly as Legal Director of Novartis UK. This in-house experience gave her significant insight into the need to give pragmatic and commercial advice.
Sally speaks on a variety of IP and regulatory life sciences topics and contributes to many leading publications; she is also the editor of ‘The Guide to EU Pharmaceutical Regulatory Law’ (published by Kluwer Law International), which is written entirely by the team at Bird & Bird with contributions from many offices. Sally is also leading the Bird & Bird Brexit Steering Committee and has published several articles on the implications of Brexit for the life sciences and medical devices industries.

Nick Boydell

Nick Boydell is a Senior Associate at Bird & Bird who works on a wide range of intellectual property matters. Nick has substantial experience of non-contentious and transactional IP, and regularly advises on IP related agreements. He has significant experience in trade mark law, including regularly advising a well known energy drinks manufacturer and a social media website on trade mark enforcement matters and filing strategy. He regularly works on High Court IP litigation and enforcement matters, including trade mark and patent litigation. He also has experience of international arbitration in patent licensing and trade mark co-existence matters. Nick has studied in Germany, is a fluent German speaker and during his training contract undertook a three month secondment at our offices in Germany. He has also studied at Nagoya University in Japan and speaks Japanese to intermediate level.

James Pearson

James Pearson, an Associate at Bird & Bird, is an experienced non-contentious and transactional IP lawyer, regularly advising clients in relation to the transfer of intellectual property rights, both in the context of stand alone transactions or as part of complex corporate matters including international M&A, corporate re-organisations and investment transactions. He is also experienced in advising on the commercialisation and exploitation of intellectual property rights, primarily in relation to the assignment or licensing of software, trade marks and patents, working with clients across a variety of sectors including media and entertainment, technology, sport and healthcare and life sciences.

Book now

9 Nov 2018
9 Nov 2018 Cavendish Hotel, London GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Enrol now
16 May 2019
16 May 2019 Cavendish Hotel, London GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Enrol now
14 Nov 2019
14 Nov 2019 Venue not yet confirmed GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Enrol now

Previous customers include...

  • ADT Services AG
  • AKZO NOBEL NV
  • ASML Netherlands BV
  • Boston Scientific
  • BP International Ltd
  • Carlsberg Breweries A/S
  • Cermak a Spol
  • Corporación Medichem, S.L.
  • Croda Europe Limited
  • ExxonMobil Chemical Europe Inc
  • F R Kelly & Co
  • Ford Motor Co Ltd
  • HGF Ltd
  • Infineum UK Ltd
  • Intercytex Ltd
  • Invensys plc
  • Ipsen Group
  • KU Leuven Research & Development
  • Leonardo MW Ltd
  • Morgan Lloyd Administration Ltd
  • Reckitt Benckiser Healthcare (UK) Ltd
  • Royal Pharmaceutical Society of Great Britain
  • Sofics BVBA
  • Solvay SA
  • Studio Legale Jacobacci & Associati
  • Syngenta Limited
  • Teva Pharmaceutical Industries Ltd
  • Thermo Fisher Scientific
  • WesternGeco Schlumberger
  • WTC Advokaterne A/S