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Reviewing and Negotiating Technology Transfer and Licensing Agreements Training Course
Providing key legal and commercial skills essential to secure a successful agreement.
Details
Course overview
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. This two-day seminar will give practical advice on the legal and commercial considerations essential for securing a successful deal.
The programme offers a comprehensive overview of all the key matters to be considered – by the licensor and the licensee – when dealing with international technology transfer and licensing agreements.
This seminar is not jurisdiction specific and is therefore ideal for those working both in the UK and overseas.
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
The key objectives
By attending this course you will:- Understand how to critically review the terms in an international technology transfer and licensing agreement
- Learn how to assess the benefits and concerns of the contracting parties under an international technology transfer and licensing agreement
- Gain knowledge of EU law governing international technology transfer and licensing agreements
- Be able to draft and negotiate key terms in an international technology transfer and licensing agreement more effectively
- Find out how to negotiate royalty rates more successfully
- Appreciate and be able to better advise on cross-jurisdictional concerns and key terms
Who should attend?
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
- Understand and draft international technology transfer and licensing agreements
- Draft and negotiate key terms more effectively
- Understand and advise on cross-jurisdictional concerns and key terms
Programme
Competition law – introduction
- Goals of competition policy
- Role of the institutions and the Member States
- Individual remedies
- Standard of proof
- Article 101 TFEU – anti-competitive agreements, decisions and concerted practices
- Agreement, decision or concerted practice exists
- Effect on trade between Member States
- Object or effect of the prevention, restriction or distortion of competition
- Impact of the de minimis doctrine on the application of Article 101(1)
- Article 101(3) TFEU – exemption
PRACTICAL EXERCISE: Competition law and its effect on trade
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
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: Negotiation of a technology licence
- Using a case scenario, participants will draft and negotiate a technology licence with particular reference to key commercial terms, inter alia:Grant
- Fees and royalties
- Rights to improvements
- Rights to 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
- Jurisdiction rules under EU law
- 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 and right to use
Ancillary agreements
- Confidentiality agreement
- Materials transfer agreement
- Memorandum of understanding
- Option agreement
PRACTICAL WORKSHOP: Arbitration
- Review of an arbitration agreement
- Negotiation of an arbitration agreement
Presenter
Michala Meiselles (More...)
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.
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25-26 Nov 2021 Live webinar |
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25-26 Nov 2021 Live webinar |
GBP 1,099 899 EUR 1,579 1,299 USD 1,786 1,474 Until 21 Oct* |
Enrol now
to attend Live webinar |
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26-27 May 2022 Live webinar |
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26-27 May 2022 Live webinar |
GBP 1,099 899 EUR 1,579 1,299 USD 1,786 1,474 Until 21 Apr 22* |
Enrol now
to attend Live webinar |
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7-8 Nov 2022 Live webinar |
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7-8 Nov 2022 Live webinar |
GBP 1,099 899 EUR 1,579 1,299 USD 1,786 1,474 Until 3 Oct 22* |
Enrol now
to attend Live webinar |
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* Note the early booking discount cannot be combined with any other offers or promotional code