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.

20 Sep 2018

GBP 699
EUR 979
USD 1,090

Book now

Course Overview

Topics covered at this meeting include, analysing and discussing the key aspects of patent/know-how licences and R&D collaborations, assessing the areas where things can and do go wrong using a draft agreement to exemplify, learn how to avoid the pitfalls using clauses which have been the subject of actual disputes, practical advice that will aid you in your day to day role, and comparison of experiences with delegates from across Europe.

Attend this comprehensive one day seminar to:

  • 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 a draft agreement to exemplify
  • Learn how to avoid the pitfalls using clauses which have been the subject of actual disputes
  • Take away practical advice that will aid you in your day-to-day role
  • Compare experiences with delegates from across Europe

Why you should attend

  • Analyse and discuss the key aspects of patent/know-how licenses and R&D collaborations
  • Assess the areas where things can and do go wrong using a draft agreement to exemplify
  • Learn how to avoid the pitfalls using clauses which have been the subjet of actual disputes
  • Take away practical advice that will aid you in your day-to-day role
  • Compare experiences with delegates from across Europe

Who should attend

  • Patent attorneys
  • Lawyers
  • Contracts managers
  • Technology transfer managers
  • Others involved in patent/know-how and R&D collaborations

Programme

Start of Seminar – Introduction

  • Setting the Scene

Key defined terms such as ‘Licensed Product’, Licensed Technology’ and ‘Valid Claim’

  • Ensuring that your definitions work
  • Avoiding common traps
  • Key drafting tips

10.45 Refreshments

Key financial terms including ‘Royalties’, ‘Offsets’ and ‘Milestones’

  • The key aspects of provisions covering milestones/earn outs and options
  • Ensuring that your royalty obligations are clear
  • Avoiding pitfalls in royalty obligations and offsets

Diligence including general ‘Commercially Reasonable Efforts’ provisions versus more stringent, easily measurable obligations

  • Define the term or rely on the case law?
  • Objective versus subjective standards
  • Giving the provisions teeth
  • Common licensee protections

Confidential information and its use and misuse

  • Defining the licence terms
  • Policing the use
  • Ownership of new IP and link to financial terms
  • Examples of current disputes

Access to and the ownership of IP

  • IP protection clauses in contracts
  • Who owns the rights?
  • Foreground and background rights
  • Exploitation and protection of new IP

Termination and management of contracts

  • Termination triggers (on notice, breach, insolvency, patent challenge)
  • Drafting tips and things to avoid
  • Dealing with the consequences in detail
  • Other matters to consider: Change of control, force majeure, renegotiation if things change
  • Governing law and the relative merits of using arbitration or the courts for dispute resolution

Presenters

Patrick Duxbury

Patrick Duxbury is a Owner/Partner at Gowling WLG (UK) LLP (formerly Wragge Lawrence Graham & Co LLP) and head of their Life Sciences Team. Patrick was originally a microbiologist and geneticist before re-qualifying as a lawyer in 1993 with first class honours.
Patrick specialises in all aspects of transactional intellectual property law in the life sciences sector. Recent transactions include several M&A transactions and licensing and collaboration deals for biotech and pharmaceutical company clients such as arGEN-X, AstraZeneca, Astellas, MedImmune, Astex Therapeutics, Chroma Therapeutics, Eisai, GSK, Heptares Therapeutics, PanGenetics and others.
Examples of transactions include:
Acting for Cambridge Antibody Technology Group (and now MedImmune) over the last ten years on numerous licence and collaboration deals including transactions with Amgen, Dyax, Micromet, Wyeth and Merck. Patrick was involved in advising MedImmune on the restructuring of its TGF Beta antibody collaboration with Genzyme and its deals with Xenome, Evotec, Amgen and Catalyst BioSciences Inc. Most recently he acted for MedImmune on the widely publicised in-licence of the Phase III antibody, Tremelimumab, from Pfizer. Acting for Astex Therapeutics on all of its significant transactions including its widely publicised licence and collaboration deals with AstraZeneca, Novartis, J&J and GSK and its recent merger with SuperGen Inc. Acting for the Japanese pharmaceutical company Eisai on its acquisition of the European rights to the intrathecal painkiller, Prialt, from Elan and the licence of the European rights to NeuroBloc® from Solstice Neurosciences Inc. Advising PanGenetics BV in connection with the $190m disposal of its PG110 antibody programme to Abbott and Chroma Therapeutics on its $1 billion collaboration with GSK. Advised Astellas on its Phase III product in-licence from Basilea Pharmaceuticals. Acting for GSK on the creation of Convergence Pharmaceuticals and most recently Autifony Therapeutics (both funded by SV Life Sciences). Acting for a range of medical research institutions such as the Medical Research Council.
He has advised in relation to fundraisings by Domantis and Chroma Therapeutics, the MBO by Close Brothers Private Equity of Rosemont Pharmaceuticals, the establishment of Sonkei Pharmaceuticals Inc by Index Ventures and Abingworth’s investment in Stanmore Implants.

Advising the Kennedy Institute on the move of its world leading inflammation research group from University College London to Oxford University.

Most recently Patrick has advised arGEN-X on its deal with Lilly, Chroma Therapeutics on its out licence of novel cancer drug Tosedostat to CTI and Heptares on its transactions with Takeda and Shire.

Patrick is a member of the Intellectual Property Committee of the Association of the British Pharmaceutical Industry and the Legal Expert Network of the ABPI. He is a regular speaker on life science topics and teaches on both the European and US BIO Advanced Business Development courses.

Luke Kempton

Luke Kempton has a PhD in biochemistry and re-qualified as a solicitor in 1994 and joined Gowling WLG (UK) LLP in 1996 (formerly Wragge Lawrence Graham & Co LLP). He heads their transactional IP practice and has considerable experience of the intellectual property aspects of corporate transactions as well as standalone licensing and collaboration deals in many technology and service sectors, but with a particular emphasis on the Life Sciences sector. His contentious experience includes the recent case of Hospira v The Kennedy Trust for Rheumatology Research relating to patents covering the use of the blockbuster monoclonal antibody infliximab (Remicade®). He also advises on clinical trial agreements and has expertise in pharmaceutical regulatory issues, including judicial review proceedings in relation to MHRA decisions. He is an expert on due diligence in the context of licence and product acquisition transactions and is commended for his ‘scientific understanding’ (Legal 500 2011). He is a member of the University of Leeds, Faculty of Biological Sciences Industrial Advisory Board. He lectures on the Advanced Licensing Course for Praxis – the leading trainer of University Technology Transfer professionals as well as speaking widely at conferences and seminars on IP issues. He has coordinated pan-European patent litigation proceedings relating to pharmaceutical products and has acted in numerous life sciences collaboration and licensing deals, as well as significant acquisitions of pharmaceutical products.  

Book now

20 Sep 2018
20 Sep 2018 Venue not yet confirmed GBP 699.00
EUR 979.00
USD 1,090.00
+ VAT @ 20.00%
Enrol now

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