Reviewing and Negotiating Technology Transfer and Licensing Agreements Training Course

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

By the end of this seminar, participants will be able to:

• 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

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