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Online Course | Intellectual property agreements: law and practice

05 December 2022–25 January 2023, 1:00 pm–2:00 pm

written in lights - Think about things differently

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

Event Information

Open to

All

Organiser

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 5 December 2022
Law: The IP law framework for IP agreements:

- Ownership: employees, commissioned works
- Types of transaction: assignments, licences, charges
- Implied terms

Session 02: Tuesday 6 December 2022
Practice: Ownership terms in IP agreements
- Foreground and Background IP; ownership of results
- Assignment
- Options

Session 03: Wednesday 7 December 2022
Law: 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 12 December 2022
Practice: 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: Tuesday 13 December 2022
Law: 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: Wednesday 14 December 2022
Practice: Confidentiality and publications

- Standard confidentiality obligations and exceptions
- Special confidentiality terms for results
- Special terms for universities and public bodies
- Publication rights

BREAK FOR CHRISTMAS

Session 07: Monday 16 January 2023
Practice: 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: Wednesday 18 January 2023
Practice: 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: Thursday 19 January 2023
Law and Practice: Risk allocation clauses

- IP warranties
- Capping and excluding liability
- Different kinds of indemnity
- Entire agreement clauses
- Insurance

Session 10: Monday 23 January 2023
Practice: 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: Tuesday 24 January 2023
Law and Practice: Termination

- Expiry, and termination for convenience
- Termination for breach or insolvency
- Consequences of termination, including purchase of improvements

Session 12: Wednesday 25 January 2023
Practice: 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 31 October 2022)
IBIL Sponsors / UCL Alumni Ticket = £680
Full time Academics / NHS / NGOs = £600

Book online at:
https://ucl-ip-agreements-autumn-2022.eventbrite.co.uk

Queries

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

Book your place