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IP Terms in Trade Mark Agreements

13 April 2021–14 April 2021, 2:00 pm–1:00 pm

Trademark spelled with scrabble pieces

A 6-hour CPD course held online

Event Information

Open to

All

Organiser

UCL Laws Events

Date and times

Day 1 from 14:00 - 17:00 | Day 2 from 10:00 - 13:00
13 & 14 April 2021

About this Course

This practical, ‘hands on’ course provides a structured discussion of various types of intellectual property (IP) clauses in commercial contracts, with a particular emphasis on agreements concerned with trade marks – e.g. trade mark licensing/assignment, distribution agreements, talent/sponsorship agreements, and settlement and co-existence agreements. We focus on why each clause is needed, how such clauses tend to be worded and negotiated, alternative clauses that are encountered, and how the outcome of the negotiations may affect your organisation’s interests. Specific topics to be covered include:

  • IP terms that are encountered in different types of trade-mark-related agreement: what is essential and what is ‘nice to have’?
  • Negotiating issues, including arguments for and against particular IP clauses; compromise proposals
  • Drafting: the importance of accurate drafting of IP terms; how to avoid ambiguity
  • Managing IP risks through appropriate contract terms and other measures, including due diligence

Please note that this course will focus mainly on IP-related topics. Practitioners who require training in all aspects of contracts (eg work and payment terms, limitation of liability, law and jurisdiction, confidentiality, duration and termination, etc) should consider combining this course with a more general contracts course or ask us to put together a tailored, in-house course for their organisation.

Who should attend

The course is intended for contracts managers, licensing executives, lawyers, trade mark attorneys and other practitioners whose job involves reviewing or drafting IP terms in commercial contracts. Attenders will understand the basics of the international IP system, and probably have some practical experience of negotiating IP terms, so that they can participate in the discussion, but they are not expected to have had extensive experience or training in intellectual property. In other words, the standard of the course is higher than a general introduction but not a legal ‘masterclass’.

We also run introductory and advanced level courses in various aspects of IP law and general contract drafting – please ask Mark Anderson for further details.

The Programme

DAY ONE

14:00 Introduction to the course
Types of IP. What are the key intellectual property (IP) terms and why are they important? Which IP issues come up frequently and how are they often addressed?
 
14:30 IP agreements generally

  • Different IP definitions, including IP v IPR; Background and Foreground IP, Field, Territory, Licensed Products, etc.
  • Terms on introducing/excluding IP from the contract. Liabilities for introducing “tainted” IP; warranties and due diligence
  • Ownership of new IP; issues arising from joint ownership; ownership of goodwill
  • Legal formalities for transfer of ownership, grant of licences, charges over IP; some international variations
  • Commercialisation rights – types and legal implications
  • IP Decision-making and management of IP, including payment of costs

[comfort break at around 15:00]
 
15:45 Specific types of contract and associated IP issues

[comfort break at around 16:00]
 
16:45 Group drafting/negotiation exercises; answers
 
17:15 End of first day
 
DAY TWO

 
10:00 Detailed drafting issues in IP terms
Examples taken from various types of contract, distribution, JV agreements, settlement agreements, franchising, licensing and assignment, etc
 
[comfort break around 11:00]
[Detailed drafting issues continues after break]
 
11:30 Other legal issues affecting IP terms

  • Implied terms under general law (eg warranty of quiet possession under SGA 1979
  • Competition laws
  • Tax
  • Others

[comfort break at around 12:00]
 
12:15 Workshop on IP terms
Group discussion of some sample IP terms (to extent time permits)
 
13:15 Course ends

About the Tutor

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)).

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. They include:

Technology Transfer (4th edn, Bloomsbury, 2020). ‘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 (4th edn, Bloomsbury, 2015). ‘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 (3rd edn, Law Society, 2015). ‘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 (4th edn, Bloomsbury, 2017). ‘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, which have been published by OUP, LexisNexis and others.

Trainer: He has run CPD courses on contract drafting subjects for the last 20 years, and is the course director of a 5-day course, Intellectual Property Transactions: Law and Practice, which is run by the Institute of Brands and Innovation Law at University College London

Fees

Standard Fee = £550
UCL Alumni / IBIL Sponsor / NHS / Government legal fee = £498

Book online at: https://ucl-ip-terms-trademark-agreements.eventbrite.co.uk

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