Focus on the drafting skills and legal and commercial issues to be considered when drawing up international IP agreements
The world’s national laws surrounding intellectual property have become more and more consistent over recent years but, whilst this is helpful to a large extent, it also sets the scene for numerous misunderstandings and disputes.
This practical course has been designed to focus on drafting skills and legal and commercial issues to be considered when drawing up international IP agreements. If you are doing business in a complex multi-jurisdictional environment you need to know how to address difficult situations when designing and negotiating IP related agreements in cross-border projects.
Why you should attend
Increase your knowledge of the legal and commercial issues surrounding international IP agreements
Improve your drafting skills by understanding the risks and opportunities
Benefit from an update on the laws affecting international IP agreements
Review competition law issues in relation to IP agreements
Understand the potential impact of Brexit on your IP agreements
Consolidate your learning with practical exercises on drafting clauses
Compare and discuss your experiences with other delegates
Programme day one
- Overview of the landscape for international IP agreements
- Differences and similarities in national laws, commercial practices, drafting styles and template agreements
The legal framework for international IP agreements: national and international differences and similarities
- Specific national and supranational IP laws affecting transactions, including laws governing initial ownership, employee rights, commissioned works, assignment and licensing
- IP laws within the framework of national property and contract laws
- Implied terms in IP agreements under national laws
- Constraints on express terms under national laws
Dealing with different types of IP (or quasi IP):
- Trade marks
- Trade secrets
- Domain names
Drafting key terms in IP agreements: grant of rights
- Technical definitions
- Licences: exclusive, non-exclusive, sole, etc
- Sub-licensing and sub-contracting
Practical exercises on drafting international IP agreements
Differences in national and industry-sector practices and commercial expectations: How these affect the terms of IP agreements
- Drafting styles, length, and content of agreements
- Use of ‘international’ template agreements
- Some terms that are considered ‘standard’ but vary between countries and industry sectors
- To what extent are the detailed terms understood or considered important at a commercial level?
Dispute resolution in international IP agreements
- Contentious IP contracts: when IP contracts go wrong!
Selected ‘legal’ clauses in international IP agreements
- Use of legal language: why it needs to be reviewed by a local lawyer
- Warranties, liability, and indemnities
- Entire agreement clauses
- Assignment and change of control
Financial terms in international IP agreements
- Upfront payments, milestones, and royalties
- Payment terms, reporting, and auditing
- A review of competition law issues
Brexit proofing your agreements
Sally Shorthose is one of the leading intellectual property (IP) partners at Bird & Bird. She provides a full range of intellectual property commercial advice and support to her clients, including licensing, partnering and exploitation agreements, research, development and marketing collaborations. She also frequently advises clients on regulatory and ‘freedom to operate’ matters, and manages significant due diligence matters. As a transactional intellectual property lawyer, she provides advice in relation to the protection and exploitation of a full range of IP rights, both in stand-alone transactions and as part of an acquisition, divestment or investment activity.
Before joining Bird & Bird in 2006, Sally was head of IP and Life Sciences at Eversheds, and prior to that she spent 11 years working in-house firstly as Senior Legal Advisor at ICI/Zeneca and latterly as Legal Director of Novartis UK. This in-house experience gave her significant insight into the need to give pragmatic and commercial advice.
Sally speaks on a variety of IP and regulatory life sciences topics and contributes to many leading publications; she is also the editor of ‘The Guide to EU Pharmaceutical Regulatory Law’ (published by Kluwer Law International), which is written entirely by the team at Bird & Bird with contributions from many offices. Sally is also leading the Bird & Bird Brexit Steering Committee and has published several articles on the implications of Brexit for the life sciences and medical devices industries.
James Pearson, an Associate at Bird & Bird, is an experienced non-contentious and transactional IP lawyer, regularly advising clients in relation to the transfer of intellectual property rights, both in the context of stand alone transactions or as part of complex corporate matters including international M&A, corporate re-organisations and investment transactions. He is also experienced in advising on the commercialisation and exploitation of intellectual property rights, primarily in relation to the assignment or licensing of software, trade marks and patents, working with clients across a variety of sectors including media and entertainment, technology, sport and healthcare and life sciences.
Tom Darvill is an Associate in the Intellectual Property Group at Bird & Bird. He has acted for clients in a number of international arbitrations, predominantly relating to high-stakes IP licensing disputes. These have been conducted under various arbitration rules (including ICC and WIPO), seated in multiple jurisdictions and have involved the application of a wide variety of national laws, including English, US, French, German and Finnish. Tom also advises clients in relation to a broad range of contentious IP matters relating to patents, copyright, trade marks, passing off and breach of confidence, including actions in the UKIPO, Intellectual Property Enterprise Court, High Court and Court of Appeal. This includes a particular expertise advising clients in relation to disputes over the licensing of standards essential patents according to F/RAND principles and copyright (including references to the Copyright Tribunal).
- Patent attorneys
- In-house lawyers
- Legal executives
- Commercial managers
- Clinical contract specialists
- Product development managers
- Research managers
- Others who are involved in drafting or managing commercial IP agreements
81 Jermyn Street