Our latest COVID-19 information/status - including self-paced online learning from our training partner Falconbury
  • Home
  • Courses
  • Avoiding Pitfalls in Patent/Know-How Licences and R&D Collaborations

Avoiding Pitfalls in Patent/Know-How Licences and R&D Collaborations

Analyse and discuss the key aspects of patent/know-how licences and R&D collaborations, assessing the areas where things can and do go wrong.

22 Sep 2020

& 22 Sep 2021

GBP 699
EUR 979
USD 1,090

Book now

Course overview

Key topics to be covered at this seminar:

  • Pitfalls and ambiguities to avoid
  • Project management
  • Achieving precision regarding IP definitions, ownership and use
  • Project and relationship management
  • The academia-industry dichotomy

Why you should attend

Attend this comprehensive one-day seminar to:

  • Ensure you have the practical mastery to give you the edge in crucial IP agreements
  • Analyse and discuss the key aspects of patent/know-how licences and R&D collaborations
  • Assess the areas where things can and do go wrong using draft agreements
  • Take away practical advice that will aid you in your day-to-day role
  • Compare experiences with delegates from across Europe

The programme includes practical exercises using draft agreements to exemplify the points discussed and help embed learning.

Who should attend

  • Patent attorneys
  • In-house lawyers
  • Private practice lawyers
  • Contracts managers
  • Technology transfer managers
  • Others involved in patent/know-how licences and R&D collaborations


  • Setting the scene – licences and R&D collaborations

Module 1: Patent/know-how licences

Key defined terms and how to avoid traps or ambiguity regarding:
  • Territory
  • Field
  • Exclusivity
Key financial terms including ‘royalties’, ‘offsets’ and ‘milestones’
  • The key aspects of provisions covering milestones
  • Royalty capping and stacking
  • The danger of options
Common pitfalls
  • Defining the licensed IP
  • Licences of improvements
  • IP warranties
  • Dispute resolution

Module 2: R&D collaborations

Alternative academia-industry interaction
• Knowledge transfer
• Sponsoring PhDs
• Scientific advisory boards
• Investing in spin-outs

Key issues
  • Complying with grant terms
  • Managing the collaboration
  • Licensing of background IP
  • Ownership and use of foreground IP
  • Departing parties and additional parties
Common pitfalls
  • Confidentiality vs publication
  • Patenting vs sharing
  • Herding diverse stakeholders
  • Change of control or key personnel
  • National idiosyncrasies, Germany and China examples


Simon Portman

Simon Portman, Managing Associate at Marks & Clerk, specialises as a commercial contract lawyer for technology companies. He works for clients in the electronics, bioscience, defence, software, nanotech and creative industries, advising companies ranging from small start-ups to big multinationals as well as individuals, public bodies and charities. He advises on a wide range of contracts, including licenses, R&D collaborations, manufacturing agreements and procurement documentation. On the regulatory front he has advised on compliance with clinical trials legislation and novel food applications, as well as freedom of information and data protection issues.

Simon has co-written two business textbooks, Commercial Issues for Life Science Companies and Intellectual Property: the Lifeblood of your Company and has contributed articles to numerous publications. He regularly gives seminars and workshops at pharmaceutical conferences in the UK and internationally. He was also part of a UK IPO steering group putting together policies and contracts suitable for R&D collaborations in China.

Prior to joining Marks & Clerk Law in March 2009 Simon trained at a London law firm (where his training included secondment to the petrochemical industry) and subsequently worked at one of Cambridge’s leading commercial practices. Simon spearheads the Cambridge branch of Marks & Clerk Law. He is a member of the industry groups One Nucleus and Cambridge Network.

Rayyan Mughal

Rayyan Mughal is a commercial contract lawyer with Marks & Clerk. He has experience of working in-house providing corporate and commercial support at an international oil and gas sector company and at a leading provider of IT Services. In private practice, Rayyan has advised IT multinationals and technology clients based in and around Cambridge.

Book now

22 Sep 2020
22 Sep 2020 Venue not yet confirmed GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Online registration unavailable: this date is nearing full capacity; please call us on 020 7749 4730 to register.
22 Sep 2021
22 Sep 2021 Venue not yet confirmed
+ VAT @ 20.00%
Enrol now

You may also be interested in

Previous customers include...

  • AstraZeneca
  • Biomet UK Healthcare Ltd
  • BOC Limited
  • bvba Advocatenkantoor Suy, Van Baeveghem & Van Houtte
  • Coloplast
  • Conocophillips
  • David H L Edwards Ltd
  • De La Rue International Ltd
  • Dechert LLP
  • Egis Pharmaceuticals
  • ETH Zurich
  • King Abdullah City for Atomic and Renewable Energy
  • Lafarge Services Groupe
  • Lancaster University
  • Market Logic Software AG
  • Medical Research Council
  • Medicines for Malaria Venture
  • Nexeon Ltd
  • NLO
  • Norbrook Laboratories Limited
  • Norgine Ltd
  • QuantuMDx
  • Sofics BVBA
  • Sony Ericsson Mobile Communications AB
  • Stevens & Bolton LLP
  • Technical University of Denmark
  • University of Brighton
  • University of Dundee
  • Warner Chilcott UK Ltd
  • WIPO

The course totally met my expectations. The speakers were really professional with clear explanations.

Kitti Szamosi, Trademark Counsel, Egis Pharmaceuticals PLC , Sep 17

I think it's great that it's highly ranked people giving the course with an international view – very important if you come from an international company. The hands-on practical part of the course made things much clearer.

Helena Reimers, Senior Legal Counsel, Sony Mobile Communications, Sep 17

A very useful and insightful course with very engaging speakers who kept the audience's attention at all times.

Fiona Scott, Patent Attorney, Nexeon Limited, Sep 17

Tshe peakers and content were of a very high standard.

Seamus McCooey, Chief Patent Counsel, Norbrook Laboratories Limited, Sep 17