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

This training course is part of our Commercial Contracts Training Course collection which has been designed for the in-house lawyer.

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

Enrol or reserve

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

Day 1
Day 2

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

Enrol or reserve

Michala Meiselles
Rubicon (UK) Limited

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

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*

Please contact us for pricing if you are interested in booking 5 or more delegates

22-23 June 2023

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 12697

GBP 1,199
EUR 1,719
USD 1,959

2 days 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

5-6 October 2023

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 12404

GBP 999 1,199
EUR 1,439 1,719
USD 1,647 1,959

Until 31 Aug

2 days 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

* 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 Reviewing and Negotiating Technology Transfer and Licensing Agreements training course

Excellent and engaging speaker – very knowledgable.

Nov 8 2017

Ann Critchell-Ward Netherlands
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 Nigeria
Legal Officer, uniQure biopharma B.V.