Reviewing and Negotiating Technology Transfer and Licensing Agreements

Licensing agreements are frequently used by commercial entities, public or quasi-public bodies for the development of new business prospects and cross-border expansion.

Newly updated programme

5-6 Nov 2019

& 2-3 Jun 2020 , 10-11 Nov 2020

GBP 1,299
EUR 1,819
USD 2,026

Book now

Course Overview

Technology transfer and licensing agreements are frequently used by commercial entities and public or quasi-public bodies for the development of new business prospects and for cross- border expansion. This two-day seminar will give practical advice on the legal and commercial considerations essential for securing a successful deal.

The programme offers a comprehensive overview of all the key matters to be considered – by the licensor and the licensee – when dealing with international technology transfer and licensing agreements.

This seminar is not jurisdiction specific and is therefore ideal for those working both in the UK and overseas.

Who should attend

Who should attend?

  • In-house counsel
  • Trainee solicitors
  • Private practice lawyers
  • Lawyers
  • Commercial and contract managers
  • Business development managers
  • Licensing executives with little or no experience of drafting and negotiating international licensing agreements

Programme

Day one

Competition law – introduction

  • Goals of competition policy
  • Role of the institutions and the Member States
  • Individual remedies
  • Standard of proof
  • Article 101 TFEU – anti-competitive agreements, decisions and concerted practices
  • Agreement, decision or concerted practice exists
  • Effect on trade between Member States
  • Object or effect of the prevention, restriction or distortion of competition
  • Impact of the de Minimis doctrine on the application of Article 101(1)
  • Article 101(3) TFEU – exemption

Competition law – technology related block exemptions

  • Vertical Restraints Block Exemptions (VRBER 2010)
  • Technology Transfer Block Exemption Regulation (2014)
  • Block exemption governing R&D

Ancillary agreements

  • Confidentiality agreement
  • Materials transfer agreement
  • Memorandum of Understanding
  • Option agreements

Technology transfer agreements

  • Set-up
  • Strategic and legal concerns of the prospective licensor
  • Key concerns reviewed
    • Term
    • Assignment – IP
    • Liability, disclaimers and indemnities
  • Benefits and disadvantages of licensing technology
  • Legal safeguards during the pre-negotiation phase
Day two

International contract disputes

  • Jurisdiction
  • Jurisdiction rules under EU law
  • Jurisdiction agreements and their status
  • Choice of law rules
  • Recognition and enforcement of arbitral awards and foreign judgments

Dispute resolution mechanisms

  • Overview
  • Features of the key mechanisms
  • Advantages and disadvantages associated with the key mechanisms
  • Arbitration
  • Why arbitrate?
  • Disadvantages of arbitrating
  • Ad hoc arbitration vs institutional arbitration?
  • Drafting concerns in relation to arbitration agreements
    • Seat of arbitration
    • Evidential rules of the arbitration
    • Preliminary relief
    • Confidentiality

R&D agreements

  • Key concerns reviewed
    • Ownership and right to use
Practical Workshop

Review of a technology licence

  • Review of the template agreement with particular reference to the key clauses, strategic considerations and drafting techniques
  • Discuss issues relating to the negotiation and execution of a technology licence
Practical Workshop

Negotiation of a technology licence

Using a case scenario, participants will draft and negotiate a technology licence with particular reference to key commercial terms inter alia

  • Grant
  • Fees and royalties
  • Rights to improvements
  • Rights to new products and grant-back clauses
  • IP and confidentiality

Presenter

Michala Meiselles

Michala Meiselles is a solicitor in England and Wales specialising in international business law, cross-border transactions and compliance. She has been working as a lawyer since 1994 and qualified as a solicitor in 1999. Starting off her career at Berrymans Lace Mawer, she has since worked in private practice and as in-house legal counsel for local government. Over a decade ago, Michala created her own dedicated consultancy firm, which she presently directs, providing business and legal solutions to multinationals, public sector entities and international organisations. In her work as a solicitor and international lawyer (operating in England, France, Canada and the US), she advises on compliance (inter alia anti-bribery and corruption, anti-money laundering and sanctions), trade finance, import and export, licensing, distribution, agency and foreign direct investment.
Michala is also a senior law lecturer at Derby Law School, where she teaches undergraduate and postgraduate law, and a visiting professor of law at Université Jean Moulin (France) and the Law School of University of Western Ontario (Western Law).
She is author of a book entitled ‘International Commercial Agreements – An Edinburgh Law Guide’ published by Edinburgh University Press (2013) and has published several articles. She is presently writing a book on international licences covering technology transfer agreements, competition law and cross-border dispute resolution for Oxford University Press.

Continuing professional development

This course qualifies for the following CPD programmes:

  • CPD certificate of attendance

Book now

5-6 Nov 2019
5-6 Nov 2019 Rembrandt Hotel, London GBP 1,299.00
EUR 1,819.00
USD 2,026.00
+ VAT @ 20.00%
Enrol now
Limited places
2-3 Jun 2020
2-3 Jun 2020 Cavendish Hotel, London GBP 1,299.00
EUR 1,819.00
USD 2,026.00
+ VAT @ 20.00%
Enrol now
10-11 Nov 2020
10-11 Nov 2020 Cavendish Hotel, London GBP 1,299.00
EUR 1,819.00
USD 2,026.00
+ VAT @ 20.00%
Enrol now

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Previous customers include...

  • AREVA NP
  • AREVA NP SAS
  • Bachem AG
  • CDT Ltd
  • Cresco I Business Law Firm
  • Figleaf
  • Ghent University - VIB
  • Industrie De Nora S.p.A
  • International Institute of Tropical Agriculture
  • Kapsch SRL
  • Novatel Inc.
  • Research and Markets
  • Sony Mobile Communications
  • Stanbic IBTC Holdings PLC
  • Tiense Suikerraffinaderij NV
  • TomTom International BV
  • Urquhart-Dykes & Lord
  • VTT Technical Research Centre of Finland
  • Xellia d.o.o (Xellia Ltd)
  • Yandex LLC
  • Zaklady Farmaceutyczne Polpharma S.A.

Speaker was clear, calm and considerate - very inclusive and helpful.

David Stanners, Patent Attorney, Urquhart-Dykes & Lord

Excellent and engaging speaker - very knowledgable.

Ann Critchell-Ward, Vice President Intellectual Property Operations, TomTom International BV

It was a course of the highest level. Speaker materials and venue was just perfect.

Piotr Adam, Lawyer, Licensing Specialist, Zaklady Farmaceutyczne Polpharma S.A.

Fantastic, wish the course was longer!

Jokotola Adebiyi, Legal Officer, Stanbic IBTC Holdings PLC

Great speaker, great team, great organization, thanks!

Noemi Jimenez Carro, Technology Transfer Project Manager, AREVA NP