Course overview

Whether you are from a large or small business, a research institution, university, government agency, pharmaceutical or biotechnology company, or an IT or software company, this programme offers a comprehensive overview of all the key matters to be considered – by the licensor/transferor and the licensee/transferee – when dealing with international technology transfer and licensing agreements.

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.

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

Who should attend?

This course is for 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

Enrol or reserve

This 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 (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: A101

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: Review and 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 EU rules 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: Review of a R&D 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

24-25 February 2025

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 14613

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

Until 20 Jan

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

16-17 June 2025

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 14764

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

Until 12 May

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

2-3 October 2025

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 14966

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

Until 28 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; and apply only when booking multiple delegates on the same date.

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 France
In-House Lawyer , Lesaffre international

Nov 8 2017

Excellent and engaging speaker – very knowledgable.

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.