About our Course
This course provides an overview of the key IP rights (e.g. patents, trade marks, design rights, trade secrets, know how) and associated agreements related to licensing these rights which technology transfer and licensing professionals experience in their day-to-day practice.
Learn which IP provisions are key to protecting your clients’ interests and how to exploit their intellectual property assets. We’ll be discussing licences and other agreements with licensing provisions, examining critical clauses and looking at real life examples to give you the skills you need to execute those key agreements.
There is a particular emphasis on licensing patents.
Who Should Attend?
Are you a business development manager, technology transfer professional, licensing executive or commercial lawyer dealing with IP licence agreements in a technology related area? These are competitive and fast-moving fields, where intellectual property assets can be extremely valuable and the cost of getting a licence agreement wrong can be high. Whether you’re in-licensing or out-licensing IP, it’s critical that you have a solid understanding of the legal principles that underpin what you are agreeing to.
Topics and group exercises include
Outline of Course
DAY 1 - Securing IP Protection (3 Hours)
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Overview of IP Rights (patents, trade marks, designs, trade secrets)
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Patent Process and Life Cycle
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Inventorship and Ownership of Patents - what rights do co-owners have?
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Patent Database Searching - checking IP status, Identifying infringers and potential licencees
DAY 2 - Enforcing and Challenging Patents (3 Hours)
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How to Read a Patent and Interpret Claims
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Infringement of Patent Rights
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Enforcement and Challenging Patents in the UK, USA, Unitary Patent Court or before the European Patent Office
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Freedom to Operate
DAY3 - Licensing (3 Hours)
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In-Licensing, out-licensing and cross-licensing patents & Know-How
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Key licensing provisions and considerations
Grant of licence - exclusive, non-exclusive, sole or cross?
Field, geographic, time restrictions?
Payment terms - minimum sales, royalties, milestones?
Arising IP, joint ownership?
Right to sub-license
Warranties
Indemnities
Disputes
Termination
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Competition Law
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Licensing Know How
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Software
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FRAND and SEPs
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Other Agreements with Licensing provisions
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Negotiating Key Licensing Terms
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Common Pitfalls
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Group Exercises
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