Presented by
Falconbury

Drafting International Technology Licensing Agreements

A two-day programme which will provide any legal and contracts team with the key legal and commercial skills essential to secure successful agreements. It also includes drafting sessions to illustrate best practice.

Find out more

  • Format: Bespoke training
  • CPD: 12 hours for your records (depending on your requirements)
  • Certificate of completion

Course Overview

This In-house training offers an intensive briefing on all the key factors to be taken into account when dealing with technology licensing agreements – whether as licensor or licensee. It will give sound practical training and guidance on the legal and commercial skills needed to secure a successful deal. Our trainers are experienced practitioners and they will use workshop session and discussion to review current best practice within industry and ensure your team have the opportunity to get answers to particular challenges.

What this training provides:

  • The key elements of licensing for business expansion
  • How to structure a licensing strategy and choose what to license
  • The key issues to explore when undertaking due diligence
  • Effective drafting techniques for pre- contact issues and contract terms
  • The correct contract terms to incorporate a royalty structure into the agreement
  • What UK and European competition laws, rules and regulations govern licensing deals
  • How to effectively manage your license deals to ensure continued commercial value
  • Special issues created when licensing to and from joint ventures
  • How best to manage disputes and termination when deals go wrong

Programme - Day 1

Licensing: a key element of international business expansion

Review of the licensing and IP landscape

  • Intellectual property rights
  • The business of licensing
  • Why license at all?
  • Why license in or out?
  • Where is your technology solution?
  • Seek and find your licensee: Exclusivity v Non Exclusivity v Sole
  • Satisfaction for all parties
  • Initiation of the activity
  • Management of the operation
  • IP landscape

Identifying what to license and structuring a licensing strategy

  • Assessing what is available for licensing
  • Determining the main market prospects
  • Approaching the key players in the market
  • Planning the deal parameters to do business
  • Termination

Due diligence for licenses and other transactions

  • What can be achieved
  • What can you do cost effectively
  • What people tend to do
Special strategies for licensing to and from joint ventures and alliances
  • Why license to/from a combined entity?
  • Getting to know your licensing partner
  • Understanding the scope of the licence
  • Turning due diligence into drafting

Technology licensing and Intellectual Property

  • Putting together the portfolio
  • Will you licence everything?
  • Is confidential information different?
  • What will you warrant?

Drafting and understanding royalty terms

  • What different royalty structures are available?
  • Defining royalty bearing products/processes
  • Royalty rates – is there any guidance?
  • Factors influencing calculation
  • Royalties related to standards licenses: FRAND
  • Policing of payment

Practical Workshop One

Negotiating international technology licensing agreements
Delegates will be divided into groups to address commercial pre-contract issues and negotiate Heads of Agreements

Licence management

  • Golden rules
  • Daily management
  • Audits
  • Termination
  • The problem areas

Programme - Day 2

Key legal issues at the pre-contract stage

  • Duty of good faith in common and civil law
  • Which law applies to the negotiations?
  • Are pre-contract negotiations enforceable?
  • Tips on entering in to pre-contract documents

Practical Workshop Two

Drafting international technology licensing agreements – Comparative drafting considerations

  • General terms
  • Key terms
  • Grant
  • Type of exclusivity
  • Territory
  • Technical assistance
  • Payments
  • Improvements
  • ‘Best endeavours’ – ‘reasonable efforts’

Creating, developing and securing your IPR’s from a legal perspective

  • Different types of technology
  • Different types of technology agreements
  • How/what/where do you protect?
  • Licence in/licence out

Contractually dealing with legal liability under the licence

  • General remarks with regard to opposing interests to licensor and licensee
    • Typical disputed areas during negotiations
    • How to resolve those?
    • Legal due diligence
    • Warranties/indemnities
  • Other practical ways to solve liability (insurances, etc.)

Practical Workshop Three

Negotiating a TT license with an academic institution
Strategic and contractual issues

Competition regulations and technology licensing agreements

  • EU and UK competition law
  • Recap of basics
  • Purpose and structure of TTBER
  • Treatment of different types of restriction
  • The Commission guidelines
  • The application of other block exemptions and guidance

Licensing under US law

  • Avoiding a Declaratory Judgment action and strategies to avoid U.S. litigation
  • Impacts of joint ownership under U.S. law
  • Avoiding antitrust and misuse issues
  • Mechanisms to protect a licensor from challenges by the licensee
  • IP valuation and strategies for the U.S. market

Tax aspects of IPR

  • Tax and an efficient IP management strategy
  • Tax issues for creating, acquiring and disposing of IP
  • Where to locate IP?
  • Tax incentives
  • Some tax planning ideas

Dealing with disputes

  • Which court to choose – governing law of licenses and international considerations
  • Establishing jurisdiction
  • ADR procedures
  • Achieving settlement by mediation
  • Protocol procedures
  • Dealing with disclosure
  • Managing the process

Rebecca Attree

Rebecca is a Qualified Solicitor, experienced Civil and Commercial Mediator and Trainer, based in London. She worked for City law firms Richards Butler (now Reed Smith) and Laytons before setting up her own international commercial law practice, Attree & Co in 1995. Rebecca has extensive experience in negotiating and drafting cross-border collaboration and joint venture agreements and licensing software agreements. She has trained thousands of lawyers and business executives over the last 25 years, in Europe and beyond, on a wide range of commercial law topics.

More details

We don't have any currently scheduled dates for this course but we can customise it to your requirements and deliver it on an in-house basis for any number of your staff or colleagues.

See below or contact us to discuss yor requirements.

UK

  • Almac Group
  • ITI Energy
  • Project services
  • Smith & Nephew
  • Thales plc
  • WorleyParsons

Germany

  • EADS Deutschland GmbH
  • European Space Operations Centre
  • MTU Maintenance Hannover Gmbh
  • Osram GmbH

Switzerland

  • JT International SA
  • Logitech
  • Wärtsilä Switzerland Ltd
  • Ypsomed AG

Denmark

  • ALK-Abelló AS
  • Futurematch
  • Maersk Olie og Gas AS

Belgium

  • Bayer BioScience NV
  • GSK BIOLOGICALS

Ireland

  • Creganna
  • PFIZER IRELAND PHARMACEUTICALS

Brazil

  • Petrobras Brasileiro SA

Bulgaria

  • SEAF

Netherlands

  • Philips International BV - IP85

Norway

  • Fastsearch

Spain

  • Laboratorios Almirall SA

Sweden

  • AstraZeneca AB

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