Overview

This online short course provides training in IP Terms in Trade Mark Agreements.

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.

Course content

DAY ONE

09:45 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?
     
10:15 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

11:45 Specific types of contract and associated IP issues
12:45 Group drafting/negotiation exercises
13:00 End of first day
     
DAY TWO
09:45 Detailed drafting issues in IP terms
Examples taken from various types of contract, distribution, JV agreements, settlement agreements, franchising, licensing and assignment, etc
     
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

12:15 Workshop on IP terms
Group discussion of some sample IP terms (to extent time permits)
13:00 Course ends

Who this course is for

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 see a full list of our general contract drafting and other courses

Teaching and structure

This course is run online over 2 consecutive days. You'll need to attend from 9.45am to 1pm both days.  The course will be held on Zoom.

Learning outcomes

By the end of this course you should have a better understanding of:

• 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

You should also have greater confidence in challenging badly-drafted provisions and recognising when 'conventional wisdom' is not supported by case law.

Cost and concessions

The standard price is £600.

A discounted price of £510 is available for:

• UCL Alumni
• UCL Institute of Brand and Innovation Law sponsoring firms

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: 29 Oct 2024, 16:40