Course

Commercial Business law

International Intellectual Property Law

Course overview

Focus on the commercialisation of intellectual property to effectively manage your risks and realise the value of your technology

Why you should attend this seminar?

The role of intellectual property in securing the diverse benefits of the new digital technologies in industry and commerce are key reasons why this topic is of increasing importance. IP can be owned, bought, and sold; identifying and protecting against the legal risks these transactions create is key to leveraging commercial value.

With this in mind, Falconbury have developed this unique and intensive three-day programme to focus on all aspects of intellectual property law. In just three days, the seminar is designed to offer a comprehensive introduction and an upto- date refresher to all those whose work involves intellectual property and its effective protection.

What are the benefits of attending this seminar?

IMPROVE your understanding and basics of international intellectual property law including:
- Copyright and neighbouring
- Registered and unregistered
- Trade marks
- Patents
- Protection of trade secrets

UNDERSTAND the role of the IP treaties and conventions

FIND OUT more about IP strategy corporate IP portfolio

LEARN about the role of IP in transactions international dimension

GET-TO-GRIPS with drafting international licensing agreements and confidentiality through practical, ‘handson’ workshops

FIND out more about the role of compliance

EXAMINE the latest issues concerning data privacy

HEAR about the role of IP in the information technology era

Who should attend?

All those whose work involves and requires a knowledge and understanding of international intellectual property law including:

In-house lawyers
Private practice lawyers
Commercial managers
Business development managers

Programme - Day 1

Introduction to the seminar

IP – The key asset in a knowledge economy and international transactions
Types of IP
IP and unfair competition law
EU law and IP: Parallel imports, licensing

Registered designs

Registered Designs Act
Basic principles
International context

Copyright and neighbouring rights

Ownership and duration
Assignment and licences
Moral rights
Infringements
International context

Trade Marks

General principles
What can be registered
Registering
EU trademarks/Infringement
Passing off

Patents

What is patentable?
Procedures
Exploitation
Protection

Confidential information

Types
Privacy aspects and the Human Rights Act
Commercial confidences
Scope of protection

Specific rights: Software and databases

Software protection
Database protection
Misappropriation of information

Enforcement of IP

The legal framework at an international and EU level
Civil, criminal and/or customs?
Enforcement in the civil courts in England & Wales

Programme - Day 2

The role of the international IP treaties and conventions

The Berne Convention
The Rome Convention
TRIPs

Digital copyright issues

Economic rights
Digital exceptions
In particular: Private copying
Problems of the Three-Step Test
DRM systems and legislation
Recent jurisprudence

Websites: Advanced issues

Domain names
Trade Marks
Unfair competition
Liability Issues

Transactions and IP

Assignments
Warranties
Due diligence
International dimension

Practical Workshop

IP due diligence in corporate transactions and related warranty negotiations

Licensing of intellectual property

Status of an intellectual property licence
Commercial approaches to technology transfer and joint ventures
Exclusivity and enforcement
Licensee protections, licensor controls
Termination – triggers and effects

Programme - Day 3

Competition law and IP

Distribution agreements. The new Vertical Restraints Block Exemption
Licensing. The Technology Transfer Block Exemption
R&D/Specialisation agreements. The European Commission’s proposed new block exemptions
Criminal cartels. The Enterprise Act

Managing a corporate IP portfolio

Objectives
Cost
Procedures
Developing a policy

Dealing with IP and IT contract disputes

Litigation
ADR
Mediation
Arbitration

Practical Workshop

Software licenses and other IT contracts

Copyright in computer software
Key terminology
Anatomy of a software licence
Source code and decompilation
IPR enforcement and security devices

The expert faculty

Chair

Gail E. Evans BA (Hons), Dip.Ed, LLB, SJD (USyd) Reader in International Trade and Intellectual Property Law; Co-Director, Queen Mary Intellectual Property Research Institute (Business and Professional); Centre for Commercial Law Studies, Queen Mary University of London. Nominated in 2008 and 2010 for the Queen Mary University of London Drapers’ Award for Excellence in Teaching, she lectures in international intellectual property law; trade mark law; and intellectual property transactions. Gails’ areas of research are the international regulation and commercialisation of intellectual property.

Faculty

Robert Bond is a partner in the IP, Technology and Commercial Team at Speechly Bircham in London. A notary public of England and Wales, Robert specialises in intellectual property law, advising businesses, large or small, on identifying, protecting and commercialising their intellectual property assets. His work encompasses IT contracts, outsourcing, Internet law, franchising and general commercial. His particular areas of specialist knowledge include legal issues for the computer games and digital media sectors, data protection and information security.

Roger Burt, formerly of IBM, and now consulting for HLBBshaw, was until recently senior counsel responsible for IP policy and strategy for IBM in Europe. As the senior IP officer in Europe, Roger reported to IBM’s Chief Patent Counsel in New York (David Kappos, who is now Head of the US Patent & Trade Mark Office). Roger was a member of the Hargreaves Committee on IP, which delivered its report to the government in May on various aspects of IP.

Alexander Carter-Silk is a partner in the IP, Technology and Commercial Team at Speechly Bircham in London where he advises on contentious and non-contentious intellectual property and technology matters. He advises suppliers and their insurers on recovering failed or failing technology projects, including large scale IT projects. Alex has significant experience investigating and reporting on the causes of project failures leading teams of lawyers and IT technology specialists in the resolution of complex high value litigation mediation and arbitration.

Trevor Cook is a partner in the London office of Bird and Bird. He joined Bird & Bird in 1974 with a degree in chemistry from Southampton University. He was admitted as a Solicitor in 1977, joining the Intellectual Property Department of Bird & Bird, where since 1981 he has been a partner. He is President of the UK Group of the AIPPI (The International Association for the Protection of Industrial Property), Secretary to the British Copyright Council Standing Committee on Copyright and Technology, and a member of the Council of the Intellectual Property Institute.

Emily Devlin is an associate in the London office of Osborne Clarke where she specialises in all aspects of intellectual property litigation, including patents, trade marks, passing off, copyright and design rights. Emily also provides non-contentious advice to a variety of trade mark and brand owners, including trade mark clearance and portfolio management advice. Emily is a member of Osborne Clarke’s Digital Business Group, focussing on the IP aspects of complex telecoms and technology disputes, and advising clients in relation to advertising, marketing and media issues. Together with Theo Savvides, Emily is acting for Marks and Spencer plc in the Google AdWords trade mark infringement case brought by Interflora, Inc., which has been referred to the CJEU (Case C-323/09). Other clients include the Isle of Man Government (the TT Races and Manx Grand Prix motorcycle races), various computer game publishers and telecoms companies.

Audrey Horton is a senior associate in the Intellectual Property Department of Bird & Bird in London. Audrey joined Bird & Bird in 1995 and advises on the full spectrum of intellectual property rights including patents, confidential information, trade marks, designs, copyright, and database rights for a wide range of clients in many different fields. Her experience also encompasses drafting and negotiating contracts for the creation, transfer or licensing of intellectual property.

Malcolm Lawrence is Chief Executive of HLBBshaw, which has offices in Cambridge and at three other sites in the UK. Malcolm has been responsible for the last several years for transforming HLBBshaw from a partnership to a true corporate culture. One dimension of that process of change has been to build IP management competences within HLBBshaw, taking the practise forward from the traditional limited role of patent attorneys in IP procurement, challenge and defence.

Angus McClean is a solicitor with Simmons and Simmons. His practice covers the full range of intellectual property related work, including patent, copyright, design right and trade mark litigation, and passing off and anti-counterfeiting matters for clients in the TMT, financial markets, life sciences and energy and infrastructure sectors. Angus also advises on the intellectual property aspects of corporate and commercial transactions and outsourcing projects in a variety of sectors. Angus also specialises in breach of confidence disputes and privacy law.

Theo Savvides is a partner in the London office of Osborne Clarke. Theo advises on all aspects of intellectual property law, including the protection, and licensing of intellectual property. The focus of Theo’s practice is on IP disputes including copyright, design right and database right infringements, trade mark infringement and passing off as well as patent infringement/validity and breach of confidence disputes. Theo has devised and managed policing and enforcement programmes for clients to protect their intellectual property rights, using a range of tactics from simple negotiation to emergency injunctions to achieve the appropriate result. Theo also advises on large commercial disputes, which include IT and cross border disputes.

Graham Smith is a partner in the London office of Bird & Bird. He joined Bird & Bird in 1983 and became a partner in 1985. His practice encompasses advisory and contentious work in the Internet, IT, intellectual property and sports fields. He has handled a variety of disputes in the IT sector, ranging from IT project litigation to software copyright disputes. In 1995 he wrote, for Computer Law & Practice, the first published article in the UK examining damages awards in computer project disputes. His section of the Encyclopedia of Information Technology Law (Sweet & Maxwell) contains a detailed examination of non-contractual liability in the IT field, including negligence liability of suppliers and consultants.

David Stone specialises in intellectual property matters, with particular expertise in branding issues including trade-marks, copyright and registered and unregistered designs. Over the years, David has worked with large and small clients in a diverse range of industries, including FMCGs, fashion, life sciences, agriculture and heavy industry, TMT and the arts. David is also a recognised expert in relation to Olympic-related IP issues. A solicitor advocate, David has the benefit of in-house experience, having represented The Coca-Cola Company as Trade Mark Counsel for Western Europe in 2003-2005. David received a special commendation from the WORLDLeaders: European IP Awards for his work with The Coca-Cola Company.

Stephen Whitfield is an associate at Travers Smith specialising in EU and UK competition law. He has particular experience in dealing with European Commission and OFT cartel investigations, obtaining merger clearances, resolving competition law disputes, advising on commercial agreements and corporate documents, and providing guidance on compliance with competition law. His expertise covers sectors including technology, life sciences, construction, sports, media, consumer products and brands.

Dr Jonathan Wills is a patent attorney in the Cambridge office of Mewburn Ellis LLP. He joined Mewburn Ellis in 2004 and is a Chartered Patent Attorney and European Patent Attorney. Jonathan has a degree in chemistry from the University of Edinburgh and a PhD in organic chemistry from the University of Cambridge.

Tim Worden is a partner in the Intellectual Property Department of Taylor Wessing. His practice includes both non-contentious and contentious intellectual property and he specialises in the life sciences and healthcare sectors. Tim was previously Legal Counsel and Company Secretary at Eli Lilly and Company Limited, the UK subsidiary of the US pharmaceutical company.