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Drafting International Intellectual Property Agreements Training Course
Focus on the drafting skills and legal and commercial issues to be considered when drawing up international IP agreements.
Details
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.
Learn about the different types of IP agreements and how to protect and exploit your rights to the best advantage for your business through carefully worded clauses. The use of practical exercises using example clauses will be worked through and discussed to embed and consolidate learning.
Key topics to be covered include:
- The legal framework for international IP agreements
- Dealing with patents, trade marks, trade secrets and domain names
- The dangers and opportunities of IP agreement templates
- Commercial expectations and industry sector differences
- Key terms, choice of law and jurisdiction
- Contentious IP contracts and dispute resolution
- Forbidden clauses – competition law issues
- Brexit-proofing your agreements
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
Benefit from an update on the laws affecting international IP agreements
Review competition law issues in relation to IP agreements
Understand the potential impact of Brexit on your IP agreements
Consolidate your learning with practical exercises on drafting clauses
Compare and discuss your experiences with other delegates and the expert faculty
Who should attend?
- Patent attorneys
- In-house lawyers
- Legal executives
- Commercial and contracts managers
- Clinical and IP contract specialists
- Product development managers
- Research managers
- Others who are involved in drafting or managing commercial IP agreements
Programme
Welcome and introduction to the course
General Aspects of IP Agreements
- Types of IP
- General drafting tips
- Assignments vs licences
Types of licences
- Non-Exclusive, Exclusive, Covenant not to Sue
- Field of Use license, Cross license, Compulsory license
- Sublicences, 'Have Made' right, Foundary Agreements
Elements of the agreement - part 1
- Preamble
- Recitals
- Definitions
Elements of the agreement - part 2
- Grant Clause
- Reservations
- Releases
- Improvements
Practical exercise on drafting international IP agreements
Elements of the agreement - part 3
- Financial Terms
- Royalty Stacking
- Reporting
- Auditing
Elements of the agreement - part 4
- Representations and Warranties
- Assignment
- Term & Termination
- Choice of Law
Dispute resolution in agreements
- Choice of Forum
- Arbitration vs. Litigation
- Arbitration Clauses
- Other ADR (eg mediation, executive negotiation)
Practical exercise on drafting international IP agreements
Presenters
Brian Kacedon (More...)
Brian Kacedon, Partner at Finnegan and based in New York, is a recognized authority in IP transactions. He has drafted and negotiated hundreds of agreements across all technologies and is designated as a Certified Licensing Professional (CLP). Brian has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience.
Brian focuses on patent and technology licensing and
litigation. In his transactional practice, Brian assists clients in
conducting market assessments for their patents, conducts licensing
negotiations, drafts licensing agreements, and participates in related
litigations. He routinely negotiates and drafts complex license and
collaboration agreements for both small and large pharmaceutical
companies, many with total payments of hundreds of millions of dollars.
Brian’s experience includes setting up and directing international
patent licensing and enforcement programs, including one that resulted
in more than 500 license agreements.
Over the course of his career, Brian has drafted hundreds of patent, know-how, and software license agreements as well as joint development, collaboration, and settlement agreements for many industries, including pharmaceutical, medical device, software and consumer electronics. He has assisted several leading technology companies in negotiating and drafting licenses for wireless technologies, as well as navigated related standards-setting issues.
Brian has extensive experience litigating agreement disputes. He has appeared as counsel in multiple litigations and arbitrations, including a trade secret misappropriation, for clients in industries ranging from pharmaceuticals to semiconductors. Brian has also been retained as an expert witness relating to the interpretation of license agreements.
Anthony D Del Monaco (More...)
Anthony’s litigation experience is expansive. He has been admitted pro hac vice to practice in, for example, the District of Nevada, District of Delaware, and Eastern District of Texas. He has also participated in over a dozen ITC investigations and appeared in over a half dozen ITC hearings. He has had key responsibilities in all aspects of litigations, from the initial pleading stage through discovery, motions, claim construction, and trial. Anthony has experience working with a broad range of technologies, including mechanical, electrical, medical devices, commercial devices, automotive components, and gaming.
Aside from litigation, Anthony provides strategic guidance to clients on infringement, validity, and enforceability issues, along with post-grant proceedings and licensing negotiations. He has given lectures on intellectual property law around the world, including in the United States, Asia, Europe, and the Middle East.
Anthony currently serves as an associate adjunct professor at American University Washington College of Law, where he teaches a course on intellectual property practice at the ITC. During law school, Anthony spent a semester externing for Judge Arthur J. Gajarsa at the U.S. Court of Appeals for the Federal Circuit. Before practicing as a lawyer, he worked as an environmental engineer and project management expert in the wastewater treatment and construction industries, respectively.
Cecilia Sanabria (More...)
Cecilia’s litigation experience spans the pre-trial, discovery, trial, and post-trial phases of litigation, and includes arguing motions in open court and examining witnesses in jury trials and hearings before the ITC. She manages fact discovery, drafts motions and legal briefs, and works with fact and expert witnesses. Cecilia also works with various aspects of patent prosecution and U.S. Patent and Trademark Office (USPTO) proceedings, including inter partes reviews (IPRs). She also has experience in drafting licensing and settlement agreements.
While obtaining her engineering degree, Cecilia worked for General Electric and was involved in engineering design in the area of aircraft engines as well as technical sales of medical systems.
Cecilia is currently the partner-in-charge of Finnegan’s Diversity, Equity, and Inclusion efforts and previously served as co-lead of Finnegan FORWARD (Focused on Raising Women’s Advancement, Representation, and Development), the firm’s women’s business initiative.
Book now
Book now
NEW higher discounts for booking multiple places - bring your colleagues to make your training budget go further:
- 30% off the 2nd delegate
- 40% off the 3rd delegate
- 50% off the 4th delegate
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24 May 2022 Live webinar 09:30-17:00 UK (London) |
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24 May 2022 Live webinar 09:30-17:00 UK (London) |
GBP 599.00 EUR 859.00 USD 970.00 + VAT @ 20.00% |
Enrol now
to attend Live webinar |
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8 Aug 2022 Live webinar 09:30-17:00 UK (London) |
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8 Aug 2022 Live webinar 09:30-17:00 UK (London) |
GBP 599 499 EUR 859 719 USD 970 814 Until 4 Jul* |
Enrol now
to attend Live webinar |
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18 Nov 2022 Live webinar 09:30-17:00 UK (London) |
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18 Nov 2022 Live webinar 09:30-17:00 UK (London) |
GBP 599 499 EUR 859 719 USD 970 814 Until 14 Oct* |
Enrol now
to attend Live webinar |
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Learn more about our face-to-face and webinar training formats.
* Note the early booking discount cannot be combined with any other offers or promotional code. As such, discounts for the 2nd/3rd/4th attendees are based on the full price of the course. Please contact us for pricing if you wish to send more than 4 delegates.