Intellectual property licensing: An advanced-level drafting workshop

About this course

The terms of intellectual property (IP) licence agreements are sometimes lengthy and complex. There are many points of drafting detail whose importance is not always obvious. For example, fine-tuning the wording of terms such as a net-sales definition or a royalty-stacking clause can significantly affect the financial return that the agreement brings. Drafting and negotiating IP licence agreements requires a special set of skills and knowledge.

This practical workshop will provide training and “hands-on” experience in the drafting of IP licence agreements. It is intended for people who already have at least two years’ day-to-day experience of drafting and negotiating IP-related agreements, and who wish to take their skills to an advanced level.

Specific topics to be considered in the workshop will include:

• The grant clause and associated definitions: which IP, which licensed acts, which field and territory, how much exclusivity; is sublicensing allowed; licence or covenant not to sue; improvements; grant-backs; competition law issues; achieving clarity and accuracy, avoiding circularity and other pitfalls.
• Warranties, liability and indemnities: understanding the risks and market practice; getting instructions; thinking through the complexities and drafting with simplicity; avoiding turgid ‘standard’ wording.
• Payment terms: upfront and milestone payments; other fees; royalties on net sales, net receipts or profits; avoiding arithmetic ambiguities; royalty-stacking clauses; withholding tax terms; VAT, interest, and other standard payment terms; auditing and reports; most favoured licensee terms
• Performance obligations: minimum sales, minimum performance, etc; general obligations of ‘best efforts’, etc; resolving disputes over performance; consequences of non-performance, including termination, loss of exclusivity, changing commercial terms.
• Termination: commencement and expiry; rights of termination; consequences of termination
• Law and jurisdiction: choices in international IP agreements, including law, jurisdiction, arbitration, mediation, etc; which is best?

Who should attend

This workshop is designed for principally for IP practitioners who are familiar with contract law, IP law and the basic principles of contract drafting, and would like to increase their knowledge, and practise their drafting skills, with other experienced practitioners.

Attenders will have at least two years’ day-to-day experience of drafting IP-related agreements, and will probably have attended courses on the subject, prior to attending the workshop.  This course is designed to be complementary to:

• The University College London 5-day practitioner course, Intellectual Property Transactions: Law and Practice
• Our 1-day course on Drafting ‘Legal’ Clauses in Commercial Contracts
• Our 1-day course on Contract Drafting: an Advanced-Level Workshop

This course focuses on the detailed commercial, legal and practice issues that frequently arise when drafting IP licence agreements, and on how to take account of these issues in the drafting.  We will be referring to examples of wording from a licence agreement throughout the day.

Preparation for the course

Although not essential, attenders may find it helpful to read the following practitioner texts as preparation for the workshop:

• Technology Transfer, Mark Anderson (3rd edition, Bloomsbury Professional, 2010) – includes discussion of licence agreements from perspective of English law
• Drafting Patent License Agreements, Brunsvold et al (7th edn, Bloomberg BNA, 2012) – excellent US text

Comments from previous attenders of this course

• I am very pleased that I attended.  I will recommend this to my colleagues.
• Very good detailed explanation and presentation. Excellent hand-outs.
• Great discussions of technical and commercial issues – normally glossed over by other courses on the subject

Course schedule

• 09:00 – Registration
• 09:30 – Introduction
• 09:45 – Licence scope and related issues
• 11:00 – Refreshments break
• 11:15 – Warranties, liability and indemnities
• 12:00 – Practical exercises; discussion of answers
• 12:45 – Lunch
• 13:45 – Payment terms
• 14:45 – Performance obligations
• 15:15 – Refreshments break
• 15:30 – Duration, termination, and consequences of termination, Law and jurisdiction, Other terms
• 16:30 – Group discussion: finding a workable compromise on contentious clauses
• 17:00 -Course ends

Presenter’s credentials

The course has been designed, and will be run, by Mark Anderson.  His credentials are:

• Solicitor: He is a practising solicitor, who is recommended in Chambers Directory for both life science transactions and IP.  He is recommended in the international guide, IAM Patent 1000, as a leading UK lawyer in the field of IP licensing.  His blog on IP contracts, IP Draughts, was made a member of the Blawg100 by the American Bar Association in 2012.  He is a Certified Licensing Professional (a qualification established by the Licensing Executives Society (US and Canada) and a Registered Technology Transfer Professional.
• Trainer: He has run CPD courses on IP and contract subjects since the 1990s. He is a visiting lecturer at the UCL Faculty of Laws, and is the course director of a 5-day course, Intellectual Property Transactions: Law and Practice, which is run by UCL’s Institute of Brand and Innovation Law. This course has won two awards: (1) a Law Society Excellence Award (Highly Commended) in the Learning and Development category, and (2) a UCL Provost’s Teaching Award.

• Author: He is the author or co-author of 7 practitioner texts on IP and contract drafting subjects, published by OUP, LexisNexis, Bloomsbury and Law Society Publishing. These include:

• Technology Transfer (3rd edn, Bloomsbury, 2010). ‘All practitioners who deal with technology transfer arrangements in England and Wales should own a copy of this work.’ (Journal of E-commerce, Technology and Communications)
• Drafting and Negotiating Commercial Contracts (3nd edn, Bloomsbury, 2010). ‘It is one of the best, if not the best, texts on the principles of commercial drafting… The material is extremely well written and accessible.’ (Student Law Journal).
• Execution of Documents (2nd edn, Law Society, 2008). ‘This is, for a highly technical law book, a riveting read. Keep it on your shelves and you’ll be confident that you will have the answer to most issues about how to make a legal document work.’ (New Law Journal)
• A-Z Guide to Boilerplate and Commercial Clauses (3nd edn, Bloomsbury, 2010). ‘An extremely useful reference work, the book will be of great benefit to in-house counsel drafting commercial contracts’ (the In-House Lawyer). ‘[The book] is very useful and I hope that it will reach a wider audience.’ (His Honour Humphrey Lloyd QC, The International Construction Law Review).

• Drafter: He and his colleagues have drafted hundreds of precedents for commercial contracts, including IP contracts, which have been published by OUP, LexisNexis and others.

If you have any queries about this course please contact Lisa Penfold at the UCL Faculty of Laws by emailing lisa.penfold@ucl.ac.uk