2-day Avoiding Pitfalls in Patent/Know-How Licences and R&D Collaborations Training Course

Module 1: Patent/know-how licences

Key defined terms and how to avoid traps or ambiguity

Regarding:

• Territory – being specific and carved our exceptions
• Field – fields of use, geographical exclusions, patent type exclusions, use exclusions
• Exclusivity – pitfalls to avoid and suggested solutions
• Case studies, examples and discussion

Key financial terms including ‘royalties’, ‘offsets’ and ‘milestones’

• The key aspects of provisions covering milestones and royalties
• Scope of licence and non-competition provisions - pitfalls to avoid and suggested solutions
• Liability and dispute resolution - suggested graduated dispute resolution steps, avoidance of conflict clauses
• Case studies, examples and discussion

Common pitfalls - part 1

• Defining the licensed IP - pitfalls and suggested solutions
• Licences of improvements – essential terms regarding foreground IP rights and responsibilities
• Case studies, examples and discussion

Common pitfalls - part 2

• IP warranties – essential IP and Data Protection warranties for every contract
• Dispute resolution – advantages and disadvantages of different resolution procedues
• Case studies, examples and discussion

Final questions for day one

Module 2: R&D collaborations

Key clauses in the contract

• Each party’s aims – understanding and negotiating
• Allocation of responsibility – where the responsibility and risk lies and how it can change with different wording
• Background IP applied - essential terms regarding background IP rights and responsibilities
• Plans for foreground IP - essential terms regarding foreground IP rights and responsibilities
• Case studies, examples and discussion

Frequently encountered issues and suggested solutions

• Role of the grantor
• Project coordination
• Letting problems fester
• Diverging agendas
• The solution
• Case studies, examples and discussion

Common pitfalls - part 1

• Confidentiality vs publication  - the conflict between industrial aims and academic aims
• Patenting vs sharing – some suggested compromise solutions
• Herding diverse stakeholders – the differing objectives of the parties involved in IP development

Common pitfalls - part 2

• Change of control or key personnel – common problems encountered and suggested solutions
• National idiosyncrasies – examples
• Case studies, examples and discussion

Final questions