Overview

This course 12 one-hour online sessions will examine a range of legal and practice issues relevant to intellectual property (IP) agreements. The course is held between 1-2pm on 4 x lunchtimes per week over three weeks

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.

Course content

1. Law: The IP law framework for IP agreements

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

2. Practice: Ownership terms in IP agreements

• Foreground and background IP, ownership of results
• Assignment
• Options

3. 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

4. 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

5. 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

6. Practice: Confidentiality and publications

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

7. 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)

8. 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

9. Law and Practice: Risk allocation clauses

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

10. 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

11. Law and Practice: Termination

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

12. Practice: Selected boilerplate clauses in IP agreements

• Assignment and change of control
• Force majeure
• Interpretation
• Law and jurisdiction

Who this course is for

This course is for lawyers, contract managers or others working with IP agreements.

Teaching and structure 

Sessions will run online from 1pm to 2pm each Monday. 

This course will be held using Zoom. You'll be sent the meeting details 1 week before the start of the course.

Each session will be recorded so, if you miss a session, you'll have 7 days to catch up.

Costs and concessions

The standard price is £800.

Discounts are available for:

• UCL Alumni
• UCL Institute of Brand and Innovation Law sponsoring firms
• full-time academics
• lawyers working in the NHS or NGOs
• group bookings

Course team

Mark Anderson

Mark is a practising solicitor, who is recommended in Chambers Directory for both life science transactions and IP. He's 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's a Certified Licensing Professional (a qualification established by the Licensing Executives Society (US and Canada)) and a Registered Technology Transfer Professional.

He's 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: a Law Society Excellence Award (Highly Commended) in the Learning and Development category, and a UCL Provost’s Teaching Award.

Course information last modified: 20 Feb 2024, 15:38