Management Forum Logo

Presented by
Management Forum

Drafting International Intellectual Property Agreements Training Course

Focus on the drafting skills and legal and commercial issues to be considered when drawing up international IP agreements.

★★★★★ "The slides and their presentation were very clear and concise."

24 May 2022 + 2 more dates

Need help?  Enrol now

  • Format: Live online, Classroom
  • CPD: 6 hours for your records
  • Certificate of completion

Course overview

The world’s national laws surrounding intellectual property have become more and more consistent over recent years but, whilst this is helpful to a large extent, it also sets the scene for numerous misunderstandings and disputes.

This practical course has been designed to focus on the drafting skills and legal and commercial issues to be considered when drawing up international IP agreements. If you are doing business in a complex multi-jurisdictional environment you need to know how to address difficult situations when designing and negotiating IP-related agreements in cross-border projects.

Learn about the different types of IP agreements and how to protect and exploit your rights to the best advantage for your business through carefully worded clauses. The use of practical exercises using example clauses will be worked through and discussed to embed and consolidate learning.

Key topics to be covered include:

  • The legal framework for international IP agreements
  • Dealing with patents, trade marks, trade secrets and domain names
  • The dangers and opportunities of IP agreement templates
  • Commercial expectations and industry sector differences
  • Key terms, choice of law and jurisdiction
  • Contentious IP contracts and dispute resolution
  • Forbidden clauses – competition law issues
  • Brexit-proofing your agreements

Why you should attend

Increase your knowledge of the legal and commercial issues surrounding international IP agreements

Improve your drafting skills by understanding the risks and opportunities

Benefit from an update on the laws affecting international IP agreements

Review competition law issues in relation to IP agreements

Understand the potential impact of Brexit on your IP agreements

Consolidate your learning with practical exercises on drafting clauses

Compare and discuss your experiences with other delegates and the expert faculty

Who should attend?

  • Patent attorneys
  • In-house lawyers
  • Legal executives
  • Commercial and contracts managers
  • Clinical and IP contract specialists
  • Product development managers
  • Research managers
  • Others who are involved in drafting or managing commercial IP agreements

Enrol now

The Drafting International Intellectual Property Agreements course will cover:

Welcome and introduction to the course

General Aspects of IP Agreements

  • Types of IP
  • General drafting tips
  • Assignments vs licences

Types of licences

  • Non-Exclusive, Exclusive, Covenant not to Sue
  • Field of Use license, Cross license, Compulsory license
  • Sublicences, 'Have Made' right, Foundary Agreements

Elements of the agreement - part 1

  • Preamble
  • Recitals
  • Definitions

Elements of the agreement - part 2

  • Grant Clause
  • Reservations
  • Releases
  • Improvements

Practical exercise on drafting international IP agreements

Elements of the agreement - part 3

  • Financial Terms
  • Royalty Stacking
  • Reporting
  • Auditing

Elements of the agreement - part 4

  • Representations and Warranties
  • Assignment
  • Term & Termination
  • Choice of Law

Dispute resolution in agreements

  • Choice of Forum
  • Arbitration vs. Litigation
  • Arbitration Clauses
  • Other ADR (eg mediation, executive negotiation)

Practical exercise on drafting international IP agreements

Enrol now

Brian Kacedon

Brian Kacedon, Partner at Finnegan and based in New York, is a recognized authority in IP transactions. He has drafted and negotiated hundreds of agreements across all technologies and is designated as a Certified Licensing Professional (CLP). Brian has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience.

Brian focuses on patent and technology licensing and litigation. In his transactional practice, Brian assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. He routinely negotiates and drafts complex license and collaboration agreements for both small and large pharmaceutical companies, many with total payments of hundreds of millions of dollars. Brian’s experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements.

Over the course of his career, Brian has drafted hundreds of patent, know-how, and software license agreements as well as joint development, collaboration, and settlement agreements for many industries, including pharmaceutical, medical device, software and consumer electronics. He has assisted several leading technology companies in negotiating and drafting licenses for wireless technologies, as well as navigated related standards-setting issues.

Brian has extensive experience litigating agreement disputes. He has appeared as counsel in multiple litigations and arbitrations, including a trade secret misappropriation, for clients in industries ranging from pharmaceuticals to semiconductors. Brian has also been retained as an expert witness relating to the interpretation of license agreements.

More details

Anthony D Del Monaco

Anthony Del Monaco, Partner at Finnegan's, practice involves all facets of intellectual property law in a wide spectrum of technologies. He focuses on patent litigation, primarily before U.S. district courts and the U.S. International Trade Commission (ITC), and arbitrations. His practice also includes inter partes reviews (IPRs), opinions of counsel, patent and trademark portfolio development, and complex licensing issues. 

Anthony’s litigation experience is expansive. He has been admitted pro hac vice to practice in, for example, the District of Nevada, District of Delaware, and Eastern District of Texas. He has also participated in over a dozen ITC investigations and appeared in over a half dozen ITC hearings. He has had key responsibilities in all aspects of litigations, from the initial pleading stage through discovery, motions, claim construction, and trial. Anthony has experience working with a broad range of technologies, including mechanical, electrical, medical devices, commercial devices, automotive components, and gaming.

Aside from litigation, Anthony provides strategic guidance to clients on infringement, validity, and enforceability issues, along with post-grant proceedings and licensing negotiations. He has given lectures on intellectual property law around the world, including in the United States, Asia, Europe, and the Middle East.

Anthony currently serves as an associate adjunct professor at American University Washington College of Law, where he teaches a course on intellectual property practice at the ITC. During law school, Anthony spent a semester externing for Judge Arthur J. Gajarsa at the U.S. Court of Appeals for the Federal Circuit. Before practicing as a lawyer, he worked as an environmental engineer and project management expert in the wastewater treatment and construction industries, respectively.

More details

Cecilia Sanabria

Cecilia Sanabria, Partner at Finnegan's, focuses her practice on complex patent litigation and client counseling in the mechanical, industrial, and electrical fields. She represents clients before U.S. district courts and the U.S. International Trade Commission (ITC). Cecilia has been selected as a DC Rising Star by the National Law Journal, recognized as a They’ve Got Next: The 40 Under 40 honoree by Bloomberg Law, as a HNBA Top Lawyer under 40 by the Hispanic National Bar Association, as a Rising Star by the Minority Corporate Counsel Association (MCCA), and by World Intellectual Property Review as one of the “Influential Women in IP.”

Cecilia’s litigation experience spans the pre-trial, discovery, trial, and post-trial phases of litigation, and includes arguing motions in open court and examining witnesses in jury trials and hearings before the ITC. She manages fact discovery, drafts motions and legal briefs, and works with fact and expert witnesses. Cecilia also works with various aspects of patent prosecution and U.S. Patent and Trademark Office (USPTO) proceedings, including inter partes reviews (IPRs). She also has experience in drafting licensing and settlement agreements.

While obtaining her engineering degree, Cecilia worked for General Electric and was involved in engineering design in the area of aircraft engines as well as technical sales of medical systems.

Cecilia is currently the partner-in-charge of Finnegan’s Diversity, Equity, and Inclusion efforts and previously served as co-lead of Finnegan FORWARD (Focused on Raising Women’s Advancement, Representation, and Development), the firm’s women’s business initiative.

More details

Book Drafting International Intellectual Property Agreements Live online/Classroom training

NEW higher discounts for multiple bookings - bring your colleagues to make your training budget go further:

  • 30% off the 2nd delegate*
  • 40% off the 3rd delegate*
  • 50% off the 4th delegate*

24 May 2022

Live online

09:30-17:00 UK (London) (UTC+01)
10:30-18:00 Paris (UTC+02)
04:30-12:00 New York (UTC-04)
Course code 11636

  • GBP 599
  • EUR 859
  • USD 970

View basket 

8 Aug 2022

Classroom
Rembrandt Hotel
London

09:30-17:00 UK (London)
Course code 11829

  • GBP 599 699
  • EUR 839 979
  • USD 934 1,090

Until 04 Jul

  • 1 day classroom-based training
  • Meet presenters and fellow attendees in person
  • Lunch and refreshments provided
  • Download documentation and certification of completion
  • Fair transfer and cancellation policy

View basket 

18 Nov 2022

Live online

09:30-17:00 UK (London) (UTC+00)
10:30-18:00 Paris (UTC+01)
04:30-12:00 New York (UTC-05)
Course code 11769

  • GBP 499 599
  • EUR 719 859
  • USD 814 970

Until 14 Oct

View basket 

* Early booking discounts may not be combined with other discounts or offers. As such, the discounts for 2nd/3rd/4th delegates are based on the full price.

Reviews of IPI's Drafting International Intellectual Property Agreements training course


Overall, the webinar was interesting and well structured and the speaker well-prepared and competent.

Nov 11 2020

Antonia Cavedon
Assistant Contracts Officer , Europeasn Space Agency

Nov 11 2020

The speakers are very knowledgeable, they explained complex issues very clearly and the use of practical examples helped to better understand the topics discussed..

Melissa Medina
Patent Assistant, Bavarian Nordic AS

May 16 2019

The slides and their presentation were very clear and concise.

Julie Sommer
Patent Specialist, Valneva Austria GmbH

May 16 2019

The course fulfilled my expectations. Knowledgeable speakers and a nice atmosphere.

Kim Den Hertog
Trademark Counsel, adidas International Marketing BV

United Kingdom

  • Alere International
  • Almac Group
  • AOL (UK) Ltd
  • AstraZeneca UK Ltd
  • BO Exploration Operating Company Ltd
  • BP
  • BP International Ltd
  • British American Tobacco
  • Cambridge Display Technology
  • Cancer Research UK
  • CDT Ltd
  • Croda Europe Limited
  • Danfoss
  • Edinburgh Innovations Ltd
  • Elekta Oncology Systems Ltd
  • Foot Anstey LLP
  • Ford Motor Co Ltd
  • Freeline Therapeutics Ltd
  • GlaxoSmithKline
  • Graham Watt & CO LLP
  • Haseltine Lake
  • Hemsley Fraser Group Ltd
  • HGF Law LLP
  • HGF Ltd
  • ICI Paints Akzo Nobel
  • Infineum UK Ltd
  • Intelligent Energy Limited
  • Intercytex Ltd
  • International Baccalaurerate
  • Ipsen Biopharm Ltd
  • Isogenica Limited
  • Johnson Matthey PLC
  • Kilburn & Strode LLP
  • Leonardo MW Ltd
  • Lupton Fawcett Lee & Priestley
  • Mars UK Ltd
  • Medical Research Council
  • MedImmune Ltd
  • Monitise International Ltd
  • Morgan Lloyd Administration Ltd
  • Norgine Ltd
  • Nottingham Trent University
  • NXP Semiconductors
  • Oncimmune Ltd
  • Orange Corporate Services Limited
  • Perkins Engine Co Ltd
  • Phillips & Leigh
  • Procter & Gamble Pharma UK Ltd
  • Quintessential Counsel Limited
  • Reckitt Benckiser Healthcare (UK) Ltd
  • Renishaw plc
  • Rouse & Co International
  • Royal Pharmaceutical Society of Great Britain
  • SC Andrew LLP
  • Sensus UK
  • Sharp Life Science (EU) Limited
  • Skype
  • Sparrowhawk Media Services Ltd
  • Spectris plc
  • Stratagem IPM Ltd
  • Syngenta Limited
  • Telindus Limited
  • Teva UK Ltd
  • The Institute Of Cancer Research: Royal Cancer Hospital
  • Thermo Fisher Scientific
  • Unilever R&D
  • Unilever R&D Port Sunlight
  • University of Sussex
  • Xeros Technology Group

Netherlands

  • adidas International Marketing BV
  • AKZO NOBEL NV
  • ASML Netherlands BV
  • Europeasn Space Agency
  • Fiberweb Plc
  • Nutreco Nederland B.V.
  • Nutricia Research B.V.
  • Philips International B.V. - IP&S
  • Sabic Petrochemicals B.V.
  • Shell International BV
  • Unilever R&D Vlaardingen

Italy

  • Dompé Farmaceutici SPA
  • Eni S.p.A.
  • GlaxoSmithKline Vaccines & Diagnostics s.r.l.
  • Industrie De Nora S.p.A
  • Industrie de Nora SpA
  • Metroconsult S.r.l.
  • Saipem S.p.A.
  • Sisvel SpA
  • Solvay Solexis SpA
  • Studio Legale Jacobacci & Associati

Belgium

  • Biotalys
  • Boston Scientific
  • CNH Industrial Belgium NV
  • ExxonMobil Chemical Europe Inc
  • Janssen Pharmaceutica NV
  • KU Leuven Research & Development
  • Sofics BVBA
  • Solvay SA

Denmark

  • BioInnovation Institute (Novo Nordisk Foundation)
  • Carlsberg Breweries A/S
  • Genmab A/S
  • K/S HIMPP
  • Leo Pharma A/S
  • Maersk Drilling
  • Takeda Pharma A/S
  • WTC Advokaterne A/S

Sweden

  • AB Tetra Pak
  • Albihns Malmo AN
  • Ericsson AB
  • Getinge
  • Johnson & Johnson
  • Maquet Critical Care AB
  • Pulpac
  • Sony Ericsson Mobile Communications AB

Switzerland

  • Abbott Products Operations AG
  • ADT Services AG
  • Medicines for Malaria Venture (MMV)
  • Omya International AG
  • STMicroelectronics International NV
  • Syngenta International AG
  • Virgin Enterprise Limited, London, Geneva Branch

France

  • Airbus
  • Ipsen Group
  • Ipsen Pharma SAS
  • MedinCell
  • Nony & Parnters
  • Sanofi-aventis

Germany

  • Bavarian Nordic AS
  • Bayer Pharma AG
  • Eurocopter Deutschland GmbH
  • Grunenthal GmbH
  • Takeda GmbH

Norway

  • Elkem ASA
  • Elkem Solar AS
  • SINTEF AS
  • TechnipFMC / FMC Kongsberg Subsea AS
  • WesternGeco Schlumberger

Finland

  • Nokia
  • Nokia Corporation

Ireland

  • BioMarin International Limited
  • F R Kelly & Co

Israel

  • Kahr-Medical
  • Teva Pharmaceutical Industries Ltd

Spain

  • Corporación Medichem, S.L.
  • Galbaian S.Coop

United Arab Emirates

  • Cedar White Bradley Consulting
  • Emaar Hotels & Resorts

Austria

  • Valneva Austria GmbH

Bulgaria

  • SAP Labs Bulgaria Ltd

Canada

  • Nortel Networks Limited

Cote D'Ivoire

  • SCPA Kanga-Olaye et Associes

Croatia

  • Jadran Galenski Laboratorij d.d.

Czech Republic

  • Cermak a Spol

Luxembourg

  • Husky Injection Molding Systems SA

United States of America

  • Invensys plc

Enrol now

Run Drafting International Intellectual Property Agreements Live online/Classroom for your team

2 days

Typical duration

Pricing from:

  • GBP 800
  • Per attendee
  • Course tailored to your requirements
  • At your choice of location, or online

 

We can customise this course to your requirements and deliver it on an in-house basis for any number of your staff or colleagues.

Contact our in-house training expert Aleksandra Beer to discuss your requirements:

Multiple colleagues? See above for details of our discounts for 2, 3, or 4 delegates. For more, talk to one of our training experts to discuss how to:

Run this course conveniently and cost-effectively in-house for your staff and colleagues

Aleksandra BEER
Training expert

+44 (0)20 7749 4749

inhouse@ipi.academy