Presented by
Falconbury

Reviewing and Negotiating Technology Transfer and Licensing Agreements

Providing key legal and commercial skills essential to secure a successful agreement.

25-26 Nov 2021 + 2 more dates

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  • Format: Live online
  • CPD: 12 hours for your records
  • Certificate of completion

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.

Benefits of attending:

  • Learn how to critically review the terms in international technology transfer and licensing agreements
  • Assess the benefits and concerns of the contracting parties under an international technology transfer and licensing agreement
  • Understand EU law governing international technology transfer and licensing agreements
  • Review the impact of the Brexit Withdrawal Agreement
  • Draft and negotiate key terms in an international technology transfer and licensing agreement more effectively
  • Effectively negotiate royalty rates to the best commercial advantage
  • Understand and advise on cross-jurisdictional concerns and key terms

The key objectives

By attending this course you will:
  • Understand how to critically review the terms in an international technology transfer and licensing agreement
  • Learn how to assess the benefits and concerns of the contracting parties under an international technology transfer and licensing agreement
  • Gain knowledge of EU law governing international technology transfer and licensing agreements
  • Be able to draft and negotiate key terms in an international technology transfer and licensing agreement more effectively
  • Find out how to negotiate royalty rates more successfully
  • Appreciate and be able to better advise on cross-jurisdictional concerns and key terms

Who should attend?

All those who need to gain knowledge and experience of cross-border commercial contracts including:
  • In-house counsel
  • Commercial and contract managers
  • Business development managers
  • Trainee solicitors
  • Attorneys
  • Private practice lawyers
  • R&D personnel
  • Licensing executives wanting a refresher
By the end of this seminar, participants will be able to:
  • Understand and draft international technology transfer and licensing agreements
  • Draft and negotiate key terms more effectively
  • Understand and advise on cross-jurisdictional concerns and key terms

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The Reviewing and Negotiating Technology Transfer and Licensing Agreements course will cover:

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

PRACTICAL EXERCISE: Competition law and its effect on trade

Competition law – technology-related block exemptions

  • Vertical Restraints Block Exemptions (VRBER 2010)
    • Market thresholds and scope of application
  • Technology Transfer Block Exemption Regulation (TTBER 2014)
    • Scope and restrictions
  • Block exemption governing R&D

PRACTICAL EXERCISE: VRBER and TTBER

Technology transfer agreements

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

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

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
  • Arbitration agreements checklist and essential drafting tools

International contract disputes

  • Jurisdiction
  • Jurisdiction rules under EU law
  • Jurisdiction agreements and their status in EU law
  • Choice of law rules
  • Recognition and enforcement of arbitral awards and foreign judgments
  • Review of the impact of the Withdrawal Agreement (Brexit deal/no deal)

PRACTICAL EXERCISE: Jurisdiction, choice of law and recognition and enforcement of foreign judgements

R&D agreements

  • Key concerns reviewed
    • Ownership and right to use

Ancillary agreements

  • Confidentiality agreement
  • Materials transfer agreement
  • Memorandum of understanding
  • Option agreement

PRACTICAL WORKSHOP: Arbitration

  • Review of an arbitration agreement
  • Negotiation of an arbitration agreement

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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.

More details

Book Reviewing and Negotiating Technology Transfer and Licensing Agreements Live online training

25-26 Nov 2021

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 11079

  • GBP 1,099
  • EUR 1,579
  • USD 1,786

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26-27 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 11676

  • GBP 899 1,099
  • EUR 1,299 1,579
  • USD 1,474 1,786

Until 21 Apr

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7-8 Nov 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 11753

  • GBP 899 1,099
  • EUR 1,299 1,579
  • USD 1,474 1,786

Until 03 Oct

View basket 

Reviews of IPI's Reviewing and Negotiating Technology Transfer and Licensing Agreements training course


Excellent and engaging speaker – very knowledgable.

Nov 8 2017

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

Nov 8 2017

I wanted to know more about drafting technology transfer agreements and my expectations were fully met. Michala was a very clear and knowledgable speaker. Fantastic!

Jokotola Adebiyi
Legal Officer, Stanbic IBTC Holdings PLC

Nov 8 2017

It was a course of the highest level. The speaker materials and venue were just perfect.

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

Nov 8 2017

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

David Stanners
Patent Attorney, Urquhart-Dykes & Lord

Sep 29 2016

Great speaker, great team, great organization, thanks!

Noemi Jimenez Carro
Technology Transfer Project Manager, AREVA NP

Belgium

  • Cresco I Business Law Firm
  • Ghent University - VIB
  • Tiense Suikerraffinaderij NV

Denmark

  • Genmab A/S
  • Leo Pharma A S
  • Xellia Pharmaceuticals ApS

France

  • AREVA NP
  • AREVA NP SAS
  • SANOFI

Italy

  • Dompé farmaceutici S.p.A.
  • Dompé Farmaceutici Spa
  • Industrie De Nora S.p.A

Switzerland

  • Bachem AG
  • F. Hoffmann-La Roche Ltd
  • Helsinn Healthcare SA

UK

  • CDT Ltd
  • Mitochondrial Substrate Invention Ltd.
  • Urquhart-Dykes & Lord

Netherlands

  • European Space Agency
  • TomTom International BV

Nigeria

  • International Institute of Tropical Agriculture
  • Stanbic IBTC Holdings PLC

Canada

  • Novatel Inc.

Croatia

  • Xellia d.o.o (Xellia Ltd)

Finland

  • VTT Technical Research Centre of Finland

Poland

  • Zaklady Farmaceutyczne Polpharma S.A.

Portugal

  • Novabase Serviços - Serviços de Gestão e Consultoria, SA

Romania

  • Kapsch SRL

Russia

  • Yandex LLC

Sweden

  • Sony Mobile Communications

Ukraine

  • Figleaf

United Arab Emirates

  • MBC FZ LLC

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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