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Drafting International Intellectual Property Agreements

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

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The content, presenters and format of this course are customised to your requirements.

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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 Del Monaco, Partner at Finnegan's, practice involves all facets of intellectual property law in a wide spectrum of technologies. He focuses on patent litigation, primarily before U.S. district courts and the U.S. International Trade Commission (ITC), and arbitrations. His practice also includes inter partes reviews (IPRs), opinions of counsel, patent and trademark portfolio development, and complex licensing issues. 

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 Sanabria, Partner at Finnegan's, focuses her practice on complex patent litigation and client counseling in the mechanical, industrial, and electrical fields. She represents clients before U.S. district courts and the U.S. International Trade Commission (ITC). Cecilia has been selected as a DC Rising Star by the National Law Journal, recognized as a They’ve Got Next: The 40 Under 40 honoree by Bloomberg Law, as a HNBA Top Lawyer under 40 by the Hispanic National Bar Association, as a Rising Star by the Minority Corporate Counsel Association (MCCA), and by World Intellectual Property Review as one of the “Influential Women in IP.”

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.

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This course can be customised to meet your requirements, and delivered to your colleagues at your location or online. For more information, call us on +44 (0)20 7749 4730, email us at inhouse@management-forum.co.uk or contact us below:

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Continuing professional development

This course qualifies for 6 hours for your CPD records.
More about CPD

Training options

Public course dates

We can deliver and customise this course for any number of attendees, at your location or online. But if you have fewer colleagues, this course is running publically on:

  • 24 May 2022
  • 8 Aug 2022
  • 18 Nov 2022

Book now

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Previous customers include...

  • ADT Services AG
  • Albihns Malmo AN
  • AOL (UK) Ltd
  • ASML Netherlands BV
  • British American Tobacco
  • Cambridge Display Technology Ltd
  • Cedar White Bradley Consulting
  • Eurocopter Deutschland GmbH
  • ExxonMobil Chemical Europe Inc
  • Galbaian S.Coop
  • GlaxoSmithKline
  • Haseltine Lake
  • ICI Paints Akzo Nobel
  • Industrie De Nora S.p.A
  • Industrie de Nora SpA
  • International Baccalaurerate
  • Johnson Matthey PLC
  • Maquet Critical Care AB
  • Mars UK Ltd
  • Medical Research Council
  • Medicines for Malaria Venture (MMV)
  • Monitise International Ltd
  • Norgine Ltd
  • Orange Corporate Services Limited
  • Royal Pharmaceutical Society of Great Britain
  • SAP Labs Bulgaria Ltd
  • Sony Ericsson Mobile Communications AB
  • Takeda GmbH
  • Takeda Pharma A/S
  • Unilever R&D

The speakers are very knowledgeable, they explained complex issues very clearly and the use of practical examples helped to better understand the topics discussed..

Melissa Medina, Patent Assistant, Bavarian Nordic AS, Nov 20

Overall, the webinar was interesting and well structured and the speaker well-prepared and competent.

Antonia Cavedon, Assistant Contracts Officer , Europeasn Space Agency , Nov 20

The course fulfilled my expectations. Knowledgeable speakers and a nice atmosphere.

Kim Den Hertog, Trademark Counsel, adidas International Marketing BV, May 19

The slides and their presentation were very clear and concise.

Julie Sommer, Patent Specialist, Valneva Austria GmbH, May 19