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Falconbury

Reviewing and Negotiating Technology Transfer and Licensing Agreements Training Course

Providing key legal and commercial skills essential to secure a successful agreement, including a review of the New Block Exemption governing research & development agreements.

★★★★★ "Excellent and engaging speaker – very knowledgable."

25-26 March 2024
+ 20-21 June 2024, 3-4 October 2024 »

from £999

Need help?  Enrol or reserve

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. These agreements are essential tools to promote innovation, collaboration, and economic development by allowing the efficient transfer and commercialisation of valuable technologies and intellectual property.

Technology transfer and licensing agreements can be complex and require expertise to ensure the interests of both parties are adequately protected. It is crucial to carefully negotiate and draft these agreements to avoid potential disputes and ensure a successful technology transfer process.

This two-day seminar gives practical advice on the legal and commercial considerations which are essential for securing a successful agreement. It has been specially designed to cover all the crucial topics, the risk areas and pitfalls to be aware of and focusses on how to negotiate the best deal for your business. Particular attention will be given to the Block Exemptions and their impact on drafting.

The expert trainer uses practical exercises and case studies to help embed the learning and build essential operational know-how. There will be ample time to ask your specific questions and to get practical solutions to take back to your workplace. 

This seminar is not jurisdiction specific and is therefore ideal for those working both in the UK and overseas.

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

Why you should attend

By attending this course you will:

  • 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

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:

Competition law – introduction

  • Goals of competition policy
  • Role of the institutions and the Member States
  • Individual remedies
  • Standard of proof
  • Article 101 TFEU (treatment of anti-competitive agreements, decisions and concerted practices)
  • When does an agreement, decision or concerted practice exist?
  • Effect on trade between Member States
  • When is the object or effect anti-competitive?
  • Impact of de minimis on the application of Article 101(1)
  • Article 101(3) TFEU – exemption

PRACTICAL EXERCISE: Common pitfalls in the drafting process

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 (RDBER 2023)

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 reference to key commercial terms, inter alia:
    • Grant
    • Fees and royalties
    • Rights to improvements, 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: overview
  • Jurisdiction: review of EUrules on jurisdiction
  • 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
    • Right to use
    • Confidentiality
    • Process planning

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

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

25-26 March 2024

Live online

09:30-17:00 UK (London) (UTC+00)
10:30-18:00 Paris (UTC+01)
05:30-13:00 New York (UTC-04)
Course code 13474

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

View basket 

 
Not ready to book yet?

for 7 days, no obligation

20-21 June 2024

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 13733

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

Until 16 May

View basket 

 
Not ready to book yet?

for 7 days, no obligation

3-4 October 2024

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 13950

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

Until 29 Aug

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


Very good presentation. Explanations were clear and useful.

Jun 22 2023

Sophie Normand
In-House Lawyer , Lesaffre international

Nov 8 2017

Excellent and engaging speaker – very knowledgable.

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, uniQure biopharma B.V.

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

United Kingdom

  • Arm Ltd
  • CDT Ltd
  • Corin Limited
  • Mitochondrial Substrate Invention Ltd.
  • RiverStone
  • Rosemont Pharmaceuticals
  • Urquhart-Dykes & Lord

Italy

  • A Menarini Industrie Farmaceutiche Riunite Srl
  • A. Menarini Industrie Farmaceutiche S.r.l.
  • Dompé farmaceutici S.p.A.
  • Dompé Farmaceutici Spa
  • Industrie De Nora S.p.A

France

  • AREVA NP
  • AREVA NP SAS
  • Lesaffre international
  • SANOFI

Belgium

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

Denmark

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

Switzerland

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

Netherlands

  • European Space Agency
  • TomTom International BV

Nigeria

  • International Institute of Tropical Agriculture
  • uniQure biopharma B.V.

Portugal

  • Bluepharma - Indústria Farmacêutica, SA - 505282801
  • Novabase Serviços - Serviços de Gestão e Consultoria, SA

Canada

  • Novatel Inc.

Croatia

  • Xellia d.o.o (Xellia Ltd)

Finland

  • VTT Technical Research Centre of Finland

Poland

  • Zaklady Farmaceutyczne Polpharma S.A.

Romania

  • Kapsch SRL

Russia

  • Yandex LLC

Sweden

  • Sony Mobile Communications

Ukraine

  • Figleaf

United Arab Emirates

  • MBC FZ LLC

Enrol or reserve

Run Reviewing and Negotiating Technology Transfer and Licensing Agreements Live online for your team

2 days

Typical duration

Pricing from:

  • GBP 800
  • Per attendee, based on 10 attendees
  • 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 experts Aleksandra Beer and Yesim Nurko 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

Aleksandra BEER
Training expert

Yesim Nurko

Yesim NURKO
Training expert

+44 (0)20 7749 4749

inhouse@ipi.academy