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Bespoke 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

Day 1

Registered designs

  • Registered Designs Act
  • Basic principles
  • International context
  • Community unregistered designs
  • Validity
  • ‘Made Available’ explained
  • Why register for design protection?
  • Designs vis-a-vis other IP rights

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 and 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: Background and legislative regime
  • Software protection
  • Database protection
  • Copyright protection
  • Misappropriation of information
  • Programme language
  • Functionality
  • Interfaces

Enforcement of IP

  • The legal framework at an international and EU level
  • Civil, criminal and/or custom?
  • Enforcement in the civil courts in England and Wales
  • IP enforcement basics
  • Legislative regime
  • Jurisdiction – general principles
  • Jurisdiction – general principles in the EU
  • Applicable law
  • Rome II Regulation
  • The Enforcement Directive 2004/48/EC
  • UK 2006 Regulation

Day 2

Digital copyright and other copyright issues

  • The role of international IP treaties and conventions
  • Digital copyright issues – private copying
  • Exceptions from copyright
  • Database rights

Websites: Advanced issues

  • Domain names
  • Trade Marks
  • Unfair competition
  • Liability Issues

  • The social network phenomenon
  • Privacy and security challenge
  • Brand and reputation issues
  • Opportunities and risk

Transactions and IP

  • Assignments
  • Warranties
  • Due diligence
  • International dimension

Practical Workshop

IP due diligence in corporate transactions

  • Factual background
  • Workshop: IP warranty review
  • Workshop: Intellectual Property Rights
  • Additional issues and thoughts on warranty protection

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

Chairs

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, 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.

Dai Davis is a technology lawyer and has degrees in physics and computing science. As well as being a solicitor, he is a qualified chartered engineer and member of theInstitution of Engineering and Technology. Having previously been National Head of Intellectual Property Law and later National Head of Information Technology Law at Eversheds, he is now the principal in his own sole practice Percy Crow Davis & Co. Dai also has considerable experience advising businesses on high-tech product liability, product recall and product safety issues.

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.

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.

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.

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.

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Continuing professional development

This course qualifies for the following CPD programmes:

  • Solicitors Regulation Authority: 17.00 hours

Previous customers include...

  • ABB Schweiz AG
  • ABB Sp z oo
  • Adecco Management & Consulting SA
  • Carey Olsen
  • Ceska sporitelna, as,
  • European Space Agency
  • European Space Operations Centre
  • ExxonMobile Petroleum & Chemical BVBA
  • FLSmidth AS
  • Genesis Pharma SA
  • GlaxoSmithKline GmbH & Co KG
  • Mabruk Oil Operations
  • MBC FZ-LLC
  • Novellie, Verardi & Mitchell
  • Oecd
  • OMV Aktiengesellschaft
  • Osborne Clarke
  • Pharming Group NV
  • Philip Morris International Management SA
  • Philips International BV - IP85
  • RTE SOLICITORS OFFICE
  • Saxo Bank
  • Sesar Joint Undertaking
  • SIMMONS & SIMMONS
  • Spanish Law firm
  • Tanzania Cigarette Company Ltd
  • Turkcell AS
  • Vector Aerospace International Ltd
  • Wärtsilä Switzerland Ltd
  • WRAP

What previous delegates say...

Excellent set of content, presentation and speakers

Rudolfo Almeida, Contracts Officer, ESTEC

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“I thoroughly enjoyed the course. John is an excellent orator and for someone who struggles sitting around the days passed swiftly”

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