Drafting International Technology Licensing Agreements

A two-day In-house programme which will provide any legal and contracts team with the key legal and commercial skills essential to secure successful agreements. It also includes drafting sessions to illustrate best practice.

Course Overview

This In-house training offers an intensive briefing on all the key factors to be taken into account when dealing with technology licensing agreements – whether as licensor or licensee. It will give sound practical training and guidance on the legal and commercial skills needed to secure a successful deal. Our trainers are experienced practitioners and they will use workshop session and discussion to review current best practice within industry and ensure your team have the opportunity to get answers to particular challenges.

What this training provides:

  • The key elements of licensing for business expansion
  • How to structure a licensing strategy and choose what to license
  • The key issues to explore when undertaking due diligence
  • Effective drafting techniques for pre- contact issues and contract terms
  • The correct contract terms to incorporate a royalty structure into the agreement
  • What UK and European competition laws, rules and regulations govern licensing deals
  • How to effectively manage your license deals to ensure continued commercial value
  • Special issues created when licensing to and from joint ventures
  • How best to manage disputes and termination when deals go wrong

To find out more call our In-house Training Team on +44 (0)20 7729 6677 or email us at info@falconbury.co.uk or use our contact form and find out how we can help. There are no commitments, and if we cannot help our advice and recommendations are free of charge.

Sample Programme Day 1

Licensing: a key element of international business expansion

Review of the licensing and IP landscape

  • Intellectual property rights
  • The business of licensing
  • Why license at all?
  • Why license in or out?
  • Where is your technology solution?
  • Seek and find your licensee: Exclusivity v Non Exclusivity v Sole
  • Satisfaction for all parties
  • Initiation of the activity
  • Management of the operation
  • IP landscape

Identifying what to license and structuring a licensing strategy

  • Assessing what is available for licensing
  • Determining the main market prospects
  • Approaching the key players in the market
  • Planning the deal parameters to do business
  • Termination

Due diligence for licenses and other transactions

  • What can be achieved
  • What can you do cost effectively
  • What people tend to do
Special strategies for licensing to and from joint ventures and alliances
  • Why license to/from a combined entity?
  • Getting to know your licensing partner
  • Understanding the scope of the licence
  • Turning due diligence into drafting

Technology licensing and Intellectual Property

  • Putting together the portfolio
  • Will you licence everything?
  • Is confidential information different?
  • What will you warrant?

Drafting and understanding royalty terms

  • What different royalty structures are available?
  • Defining royalty bearing products/processes
  • Royalty rates – is there any guidance?
  • Factors influencing calculation
  • Royalties related to standards licenses: FRAND
  • Policing of payment

Practical Workshop One

Negotiating international technology licensing agreements
Delegates will be divided into groups to address commercial pre-contract issues and negotiate Heads of Agreements

Licence management

  • Golden rules
  • Daily management
  • Audits
  • Termination
  • The problem areas

Sample Programme Day 2

Key legal issues at the pre-contract stage

  • Duty of good faith in common and civil law
  • Which law applies to the negotiations?
  • Are pre-contract negotiations enforceable?
  • Tips on entering in to pre-contract documents

Practical Workshop Two

Drafting international technology licensing agreements – Comparative drafting considerations

  • General terms
  • Key terms
  • Grant
  • Type of exclusivity
  • Territory
  • Technical assistance
  • Payments
  • Improvements
  • ‘Best endeavours’ – ‘reasonable efforts’

Creating, developing and securing your IPR’s from a legal perspective

  • Different types of technology
  • Different types of technology agreements
  • How/what/where do you protect?
  • Licence in/licence out

Contractually dealing with legal liability under the licence

  • General remarks with regard to opposing interests to licensor and licensee
    • Typical disputed areas during negotiations
    • How to resolve those?
    • Legal due diligence
    • Warranties/indemnities
  • Other practical ways to solve liability (insurances, etc.)

Practical Workshop Three

Negotiating a TT license with an academic institution
Strategic and contractual issues

Competition regulations and technology licensing agreements

  • EU and UK competition law
  • Recap of basics
  • Purpose and structure of TTBER
  • Treatment of different types of restriction
  • The Commission guidelines
  • The application of other block exemptions and guidance

Licensing under US law

  • Avoiding a Declaratory Judgment action and strategies to avoid U.S. litigation
  • Impacts of joint ownership under U.S. law
  • Avoiding antitrust and misuse issues
  • Mechanisms to protect a licensor from challenges by the licensee
  • IP valuation and strategies for the U.S. market

Tax aspects of IPR

  • Tax and an efficient IP management strategy
  • Tax issues for creating, acquiring and disposing of IP
  • Where to locate IP?
  • Tax incentives
  • Some tax planning ideas

Dealing with disputes

  • Which court to choose – governing law of licenses and international considerations
  • Establishing jurisdiction
  • ADR procedures
  • Achieving settlement by mediation
  • Protocol procedures
  • Dealing with disclosure
  • Managing the process

Recommended Trainers

Rebecca Attree is a qualified solicitor and Accredited Mediator based in London. A Cambridge graduate, Rebecca worked for City law firms Richards Butler and Laytons before setting up her own international commercial law practice, Attree & Co in 1995. Rebecca has extensive experience in negotiating and drafting cross-border technology licence agreements that raise issues of applicable law and jurisdiction. She has considerable knowledge of comparative law, intellectual property, competition law, drafting commercial contracts, mediation and dispute resolution. Rebecca also lectures in Europe on technology transfer and other commercial law topics.

Colin Hunsley is Commercialisation Director at ClearViewIP helping clients develop and implement their IP strategy and establish effective processes to identify, protect and realise value from their IP portfolio. Colin has an outstanding track record for generating substantial revenues from intellectual property enabling ClearViewIP to create tangible value for clients. Before joining ClearViewIP, Colin was Senior VP Technology Commercialisation at BTG where he led the Physical Sciences team. He is a council member for LES B&I, past Chairman of the ImechE Medical Engineering Division and has also been recognised by his appointment to the IAM 300 as one of the World’s leading IP strategists.

Bespoke training

We can customise this course to meet the requirements of your organisation. Contact us to discuss your training requirements.

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