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6 CPD hours

Drafting International Intellectual Property Agreements Training Course ★★★★★

Brian Kacedon

Essential training course for patent attorneys and IP lawyers. Navigate multi-jurisdictional challenges, competition law pitfalls, and dispute resolution in cross-border IP agreements effectively. More details...

Questions?
Contact Yesim about this course, or call us on +44 7749 4749

Classroom

09:00 - 17:00 UK (London)

Course code 15736

£699 / €979 / $1,123

Pricing details: multiple places, early booking discounts

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Live online

13:30 - 17:00 UK (London) (UTC+01)
14:30 - 18:00 Paris (UTC+02)
08:30 - 12:00 New York (UTC-04)

Course code 17167

3rd place FREE

£599 / €839 / $963

Pricing details: multiple places, early booking discounts

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Classroom

09:00 - 17:00 UK (London)

Course code 17482

3rd place FREE

£699 / €979 / $1,123

Pricing details: multiple places, early booking discounts

View basket

Tailored to your team's requirements, at your choice of location or online.

From

£475

Per delegate, based on 10 delegates and a duration of 1 day

Contact our in-house team

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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 training 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

This course is part of our collection of IP & Patents Training Courses.

Benefits of attending

By attending this training course you will:

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?

This training course has been specifically designed for:

Patent attorneys
In-house lawyers
Legal executives
Commercial and contracts managers
Clinical and IP contract specialists
Product development managers
Research managers

And other professionals who are involved in drafting or managing commercial IP agreements.

Popular with...

This course has proven particularly popular among our customers in these roles:

Commercial Manager
European Patent Attorney
General Counsel
IP Counsel
IP Manager
IP Specialist
Lawyer
Legal Counsel
Patent Attorney
Senior Patent Attorney

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This course will cover:

Welcome and introduction to the course

Summary of the topics to be covered

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

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Brian Kacedon
Finnegan

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.

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Cara Regan
Finnegan

Cara Regan is an Associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. She works on patent and trade secret litigation at every stage, from the strategic decision to file a proceeding through appeal. Her experience includes district court and International Trade Commission (ITC) actions; post-grant challenges at the Patent Trial and Appeal Board (PTAB); and appeals at the U.S. Court of Appeals for the Federal Circuit, where she clerked.

Cara has been involved in district court proceedings, ITC investigations, contentious proceedings before the U.S. Patent and Trademark Office (USPTO), and appeals. She has experience with pre-suit due diligence, discovery, depositions, claim construction, summary judgment motions, Daubert motions, and post-trial briefing, as well as with managing related PTAB proceedings and pursuing appeals. She also assists clients in evaluating infringement risks and negotiating license agreements. Her technical expertise encompasses a wide range of technologies, including medical devices, software, mobile phones, laptops, automobiles, and consumer products.

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Nessa Khandaker
Finnegan

Nessa Khandaker is a solicitor in Finnegan’s London office, advising on the full spectrum of intellectual property rights, privacy and advertising law. She works with clients across sectors including pharmaceuticals, medical devices, telecommunications, fashion, food and beauty.

Nessa has extensive trial and appellate experience in life sciences and high-tech patent disputes, as well as copyright, trade mark and passing-off matters. She has acted before the English High Court, the Intellectual Property Enterprise Court and the UK and EU Intellectual Property Offices.

In addition to her disputes practice, Nessa advises on intellectual property transactions, including licensing, commercialisation and collaboration arrangements. She supports clients on the protection, exploitation and transfer of intellectual property rights. She has a particular focus on advertising and marketing law, advising on regulatory compliance and dispute avoidance.

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Discounts for multiple bookings - bring your colleagues to make your training budget go further:

2nd delegate: 30% off
3rd delegate: 40% off - or FREE for advance bookings (12 weeks or more)
4th delegate: 50% off
5+ delegates: contact us for group or bespoke bookings

13 November

Classroom
Rembrandt Hotel
London

09:00-17:00 UK (London)
Course code 15736
Optional £255/€356/$407 per night

GBP 699 799
EUR 979 1,119
USD 1,123 1,279

Until 09 Oct

1 day classroom-based training
Optional accommodation - 1 night including breakfast, checking in the day before the course
Meet presenters and fellow attendees in person
Lunch and refreshments provided
Download documentation and certification of completion
Fair transfer and cancellation policy

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Not ready to book yet?

for 7 days, no obligation

11-12 May 27

Live online

13:30-17:00 UK (London) (UTC+01)
14:30-18:00 Paris (UTC+02)
08:30-12:00 New York (UTC-04)
Course code 17167

GBP 599 699
EUR 839 979
USD 963 1,119

3rd place FREE until 16 Feb

2 sessions of live online training
Browser-based, no download usually required
See presenters and interact with fellow attendees
Download documentation and certification of completion
Fair transfer and cancellation policy

View basket

Not ready to book yet?

for 7 days, no obligation

12 November 27

Classroom
London venue TBC

09:00-17:00 UK (London)
Course code 17482
Optional £255/€356/$407 per night

GBP 699 799
EUR 979 1,119
USD 1,123 1,279

3rd place FREE until 20 Aug

1 day classroom-based training
Optional accommodation - 1 night including breakfast, checking in the day before the course
Meet presenters and fellow attendees in person
Lunch and refreshments provided
Download documentation and certification of completion
Fair transfer and cancellation policy

View basket

Not ready to book yet?

for 7 days, no obligation

* 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; and apply only when booking multiple delegates on the same date.

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 Netherlands
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 Germany
IP & Legal assistant, Bavarian Nordic