Presented by
Management Forum

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.

2 Mar 2022 + 1 more date

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

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

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The Avoiding Pitfalls in Patent/Know-How Licences and R&D Collaborations course will cover:

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

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Simon Portman

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.

More details

Book Avoiding Pitfalls in Patent/Know-How Licences and R&D Collaborations Live online training

2 Mar 2022

Live online

09:00-17:00 UK (London) (UTC+00)
10:00-18:00 Paris (UTC+01)
04:00-12:00 New York (UTC-05)
Course code 11693

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

Until 26 Jan

In your basket 

19 Sep 2022

Live online

09:00-17:00 UK (London) (UTC+01)
10:00-18:00 Paris (UTC+02)
04:00-12:00 New York (UTC-04)
Course code 11846

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

Until 15 Aug

In your basket 

Reviews of IPI's Avoiding Pitfalls in Patent/Know-How Licences and R&D Collaborations training course


Tshe peakers and content were of a very high standard.

Sep 21 2017

Seamus McCooey
Director of IP, Grifols Worldwide Operations

Sep 21 2017

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 21 2017

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 21 2017

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

Kitti Szamosi
Trademark Counsel, Egis Pharmaceuticals PLC

UK

  • Aberystwyth University
  • Biomet UK Healthcare Ltd
  • BOC Limited
  • Conocophillips
  • Crown Packaging UK PLC
  • David H L Edwards Ltd
  • De La Rue International Ltd
  • Dechert LLP
  • DSTL
  • Falconbury Ltd
  • GE Healthcare Ltd
  • Innovia Films Ltd
  • Institute of Cancer Research
  • Lancaster University
  • Latham & Watkins LLP
  • Medical Research Council
  • Nexeon Limited
  • Norgine Ltd
  • QuantuMDx
  • Ricardo UK Ltd
  • Stevens & Bolton LLP
  • Unilever PLC
  • University of Bath
  • University of Brighton
  • University of Dundee
  • Warner Chilcott UK Ltd
  • Withers & Rogers LLP

Denmark

  • Ascendis Pharma A/S
  • Coloplast
  • Coloplast A/S
  • Genmab A/S
  • Leo Pharma A/S
  • Technical University of Denmark

France

  • BD Medical - Pharmaceutical Systems
  • Lafarge Services Groupe
  • MEDINCELL
  • SANOFI
  • Total Raffinage Marketing

Switzerland

  • ETH Zurich
  • Inventio AG
  • JTI
  • Medicines for Malaria Venture
  • WIPO

Belgium

  • bvba Advocatenkantoor Suy, Van Baeveghem & Van Houtte
  • Redco NV
  • SESVanderHave NV/SA
  • Sofics BVBA

Germany

  • Boehringer Ingelheim Pharma GmbH & Co. KG
  • KWS Berlin GmbH
  • Market Logic Software AG

Sweden

  • AstraZeneca
  • Sony Ericsson Mobile Communications AB
  • Sony Mobile Communications

Hungary

  • Egis Pharmaceuticals
  • Egis Pharmaceuticals PLC

Netherlands

  • NLO
  • Unilever

Austria

  • Borealis

Ireland

  • Grifols Worldwide Operations

Italy

  • Sealed Air SRL

Norway

  • Drug Discovery Laboratory AS

Saudi Arabia

  • King Abdullah City for Atomic and Renewable Energy

United Arab Emirates

  • Rouse & Co International

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Multiple colleagues?
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