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.

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

Book now

We do not currently have dates confirmed for this course; please contact us to be informed when it is scheduled; or to discuss running this course on an in-house basis for your staff.

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Previous customers include...

  • BD Medical - Pharmaceutical Systems
  • BOC Limited
  • Boehringer Ingelheim Pharma GmbH & Co. KG
  • Borealis
  • bvba Advocatenkantoor Suy, Van Baeveghem & Van Houtte
  • Coloplast
  • Coloplast A/S
  • Crown Packaging UK PLC
  • De La Rue International Ltd
  • Dechert LLP
  • Drug Discovery Laboratory AS
  • Egis Pharmaceuticals
  • Etex Services - IPSC
  • ETH Zurich
  • GE Healthcare Ltd
  • Inventio AG
  • King Abdullah City for Atomic and Renewable Energy
  • Lafarge Services Groupe
  • Lancaster University
  • Latham & Watkins LLP
  • Medical Research Council
  • Medicines for Malaria Venture
  • Nexeon Ltd
  • Norbrook Laboratories Limited
  • QuantuMDx
  • Sony Mobile Communications
  • Stevens & Bolton LLP
  • University of Brighton
  • University of Dundee
  • Warner Chilcott UK Ltd

Very useful and insightful

Fiona Scott, Patent Attorney, Nexeon Limited

Speakers and content to a very high standard

Seamus McCooey, Chief Patent Counsel, Norbrook Laboratories Limited

Really professional, clear explanations, I liked it a lot

Kitti Szamosi, Trademark Counsel, Egis Pharmaceuticals PLC

I think it's great that it's highly ranked people giving the course in a an international view. Very important if you come from an international company. Good if they have experience from a wide range of industries.

Helena Reimers, Senior Legal Counsel, Sony Mobile Communications