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

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.

2 Mar 2022

& 19 Sep 2022

Book now

Details

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

Programme

Introduction

  • Setting the scene – licences in the morning, R&D collaborations in the afternoon.
  • Each session will be based on a real contract, covering what the parties wanted out of the arrangement, why key clauses were in there and the problems they encountered, legal, technical and relationship-wise, when implementing the contract.
  • Lessons learned by the parties and their advisors from each scenario.

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 and royalties
  • Scope of licence and non-competition provisions
  • Liability and dispute resolution

Module 2: R&D collaborations

Key clauses in the contract

  • Each party’s aims
  • Allocation of responsibility
  • Background IP applied
  • Plans for Foreground IP

Problems encountered

  • Role of the grantor
  • Project coordination
  • Letting problems fester
  • Diverging agendas
  • The solution

Presenter

Simon Portman (More...)

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.

Book now

Book now

2 Mar 2022
Live webinar
2 Mar 2022
Live webinar
GBP 599 499
EUR 859 719
USD 970 814
Until 26 Jan 22*
Enrol now
to attend
Live webinar
19 Sep 2022
Live webinar
19 Sep 2022
Live webinar
GBP 599 499
EUR 859 719
USD 970 814
Until 15 Aug 22*
Enrol now
to attend
Live webinar

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

Continuing professional development

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

Customised in-house training

We can customise this course to meet the requirements of your organisation and deliver it at your location and/or online.

Contact us

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Previous customers include...

  • Ascendis Pharma A/S
  • AstraZeneca
  • BOC Limited
  • Conocophillips
  • David H L Edwards Ltd
  • De La Rue International Ltd
  • Drug Discovery Laboratory AS
  • DSTL
  • Egis Pharmaceuticals PLC
  • Etex Services - IPSC
  • GE Healthcare Ltd
  • Genmab A/S
  • Innovia Films Ltd
  • King Abdullah City for Atomic and Renewable Energy
  • KWS Saat SE & Co.KGaA
  • Lafarge Services Groupe
  • Latham & Watkins LLP
  • Medical Research Council
  • MedinCell S.A.
  • Nexeon Ltd
  • Norgine Ltd
  • Ricardo UK Ltd
  • Rouse & Co International
  • SESVanderHave NV/SA
  • Sofics BVBA
  • Sony Mobile Communications
  • Stevens & Bolton LLP
  • Unilever PLC
  • Unilever R&D Vlaardingen
  • University of Dundee

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

Kitti Szamosi, Trademark Counsel, Egis Pharmaceuticals PLC , 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

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

Tshe peakers and content were of a very high standard.

Seamus McCooey, Director of IP, Grifols Worldwide Operations, Sep 17