UCL Faculty of Laws


Online Course | Intellectual property agreements: law and practice

27 September 2021–20 December 2021, 1:00 pm–2:00 pm

written in lights - Think about things differently

A new bite-size course with 12 x 1 hour sessions over 12 weeks

Event Information

Open to



UCL Laws Events

About this course

Intellectual property (IP) agreements raise unique issues of law and practice. To draft and interpret them, it is necessary to be familiar with IP laws governing ownership rights and the different types of transaction, including assignments, licences and charges. General contract and property laws may need to be considered.
Other laws may be relevant when the IP is generated at a university, such as those concerning freedom of information, state aid, charities and tax. Many IP agreements concern products that are regulated, and the agreement may need to take account of those regulations. Other laws relating to public policy may be relevant, including EU and UK competition laws.
Practice in IP agreements varies between industry sectors. And yet the basic features of many IP agreements are similar.
This course will examine, in 12 one-hour sessions, a range of legal and practice issues that are relevant to different types of IP agreement. We will highlight key issues in the areas of law mentioned above, and discuss the detailed wording of IP agreements in areas such as:

  • Grant clauses and definitions
  • Confidentiality and publications
  • Payments
  • Performance obligations
  • Warranties and liability
  • Duration and termination
  • Law and jurisdiction

By the end of the course, you should have greater confidence in your ability to draft and interpret IP agreements, and a greater understanding of the legal framework that underpins such agreements.

What is covered when - the schedule

Each session will be 1 hour from 13:00 - 14:00 GMT

Session 01 -  Monday 27 September 2021
Law: The IP law framework for IP agreements:
- Ownership: employees, commissioned works
- Types of transaction: assignments, licences, charges
- Implied terms
Session 02: Monday 4 October 2021
Ownership terms in IP agreements
- Foreground and Background IP; ownership of results
- Assignment
- Options
Session 03: Monday 11 October 2021
Key competition law issues affecting IP agreements
- Articles 101 and 102 TFEU; UK competition laws
- Block exemptions and Commission Guidance documents
- Red-flag clauses in licence agreements and R&D collaborations
- Drafting grant clauses in intra-EU licences
Session 4: Monday 18 October 2021
Licence clauses
- Definitions: field, territory
- Licensing different types of IP
- Scope of licence: permitted acts, exclusivity
- Other licence qualifiers: perpetual, irrevocable, etc
- Sub-licensing
- Covenants not to sue
Session 05: Monday 25 October 2021
Selected legal and policy issues affecting public bodies (including universities) that generate IP
- Charity and tax laws
- State Aid
- Freedom of information
- Need for publications
Session 06: Monday 1 November 2021
Confidentiality and publications
- Standard confidentiality obligations and exceptions
- Special confidentiality terms for results
- Special terms for universities and public bodies
- Publication rights

READING WEEK - 8 November

Session 07: Monday 15 November 2021
Payment terms
- Upfront and milestone payments
- Royalties and minimum royalties
- Net Sales and Net Receipts definitions
- Royalty stacking
- Combination products
- Payment reduction clauses (e.g. most favoured licensee)
Session 08: Monday 22 November 2021
Diligence obligations
- Milestone activities and “best endeavours” type obligations
- Development plans and reports
- Disputes over diligence, including use of ADR
- Consequences of non-diligence
Session 09: Monday 29 November 2021
Law and Practice:
Risk allocation clauses
- IP warranties
- Capping and excluding liability
- Different kinds of indemnity
- Entire agreement clauses
- Insurance
Session 10: Monday 6 December 2021
Other selected clauses in IP agreements
- Work obligations in R&D agreements
- Quality control, audit and goodwill clauses in TM agreements
- Managing infringement disputes re licensed IP
- Waivers of moral rights in copyright-related agreements
Session 11: Monday 13 December 2021
Law and Practice:
- Expiry, and termination for convenience
- Termination for breach or insolvency
- Consequences of termination, including purchase of improvements
Session 12: Monday 20 December 2021
Selected boilerplate clauses in IP agreements
- Assignment and change of control
- Force majeure
- Interpretation
- Law and jurisdiction


About the Tutor - Mark Anderson

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

Virtual Delivery and Recordings

This course will be held using Zoom. You will be sent the zoom meeting details 1 week before the start of the course and we will send a reminder of the link 1 hour before the start of each weekly session.

We know that you may not be able to attend every session in this series and we make a recording of each session available for 7-days so that you can catch up in your own time.

Fees and how to book

Standard Ticket = £800 (Early bird £680 - ends 27 August)
IBIL Sponsors / UCL Alumni Ticket = £680
Full time Academics / NHS / NGOs = £600

Book online at:


If you have a query about this course please contact Lisa Penfold - lisa.penfold@ucl.ac.uk

Book your place