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Reviewing and Negotiating Technology Transfer and Licensing Agreements (London, United Kingdom - June 2-3, 2020)

  • ID: 4901250
  • Conference
  • Location: London, United Kingdom
  • 2 Days
  • Falconbury Ltd
  • Conference Dates: June 2-3, 2020
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Technology transfer and licensing agreements are frequently used by commercial entities and public or quasi-public bodies for the development of new business prospects and for cross- border expansion. This two-day seminar will give practical advice on the legal and commercial considerations essential for securing a successful deal.

The programme offers a comprehensive overview of all the key matters to be considered - by the licensor and the licensee - when dealing with international technology transfer and licensing agreements.

This seminar is not jurisdiction-specific and is therefore ideal for those working both in the UK and overseas.

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Day one

Competition law - introduction

  • Goals of competition policy
  • Role of the institutions and the Member States
  • Individual remedies
  • Standard of proof
  • Article 101 TFEU - anti-competitive agreements, decisions and concerted practices
  • Agreement, decision or concerted practice exists
  • Effect on trade between Member States
  • Object or effect of the prevention, restriction or distortion of competition
  • Impact of the de Minimis doctrine on the application of Article 101(1)
  • Article 101(3) TFEU - exemption

Competition law - technology related block exemptions

  • Vertical Restraints Block Exemptions (VRBER 2010)
  • Technology Transfer Block Exemption Regulation (2014)
  • Block exemption governing R&D

Ancillary agreements

  • Confidentiality agreement
  • Materials transfer agreement
  • Memorandum of Understanding
  • Option agreements

Technology transfer agreements

  • Set-up
  • Strategic and legal concerns of the prospective licensor
  • Key concerns reviewed
    • Term
    • Assignment - IP
    • Liability, disclaimers and indemnities
  • Benefits and disadvantages of licensing technology
  • Legal safeguards during the pre-negotiation phase

Day two

International contract disputes

  • Jurisdiction
  • Jurisdiction rules under EU law
  • Jurisdiction agreements and their status
  • Choice of law rules
  • Recognition and enforcement of arbitral awards and foreign judgments

Dispute resolution mechanisms

  • Overview
  • Features of the key mechanisms
  • Advantages and disadvantages associated with the key mechanisms
  • Arbitration
  • Why arbitrate?
  • Disadvantages of arbitrating
  • Ad hoc arbitration vs institutional arbitration?
  • Drafting concerns in relation to arbitration agreements
    • Seat of arbitration
    • Evidential rules of the arbitration
    • Preliminary relief
    • Confidentiality

R&D agreements

  • Key concerns reviewed
  • Ownership and right to use

Practical Workshop

Review of a technology licence

  • Review of the template agreement with particular reference to the key clauses, strategic considerations and drafting techniques
  • Discuss issues relating to the negotiation and execution of a technology licence

Practical Workshop

Negotiation of a technology licence

Using a case scenario, participants will draft and negotiate a technology licence with particular reference to key commercial terms inter alia

  • Grant
  • Fees and royalties
  • Rights to improvements
  • Rights to new products and grant-back clauses
  • IP and confidentiality
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  •  Michala Meiselles Michala Meiselles ,
    Solicitor, Law Lecturer & Author ,
    Derby Law School


    Michala Meiselles is a solicitor in England and Wales specialising in international business law, cross-border transactions and compliance. She has been working as a lawyer since 1994 and qualified as a solicitor in 1999. Starting off her career at Berrymans Lace Mawer, she has since worked in private practice and as in-house legal counsel for local government. Over a decade ago, Michala created her own dedicated consultancy firm, which she presently directs, providing business and legal solutions to multinationals, public sector entities and international organisations. In her work as a solicitor and international lawyer (operating in England, France, Canada and the US), she advises on compliance (inter alia anti-bribery and corruption, anti-money laundering and sanctions), trade finance, import and export, licensing, distribution, agency and foreign direct investment.
    Michala is also a senior law lecturer at Derby Law School, where she teaches undergraduate and postgraduate law, and a visiting professor of law at Université Jean Moulin (France) and the Law School of University of Western Ontario (Western Law).
    She is author of a book entitled ‘International Commercial Agreements – An Edinburgh Law Guide’ published by Edinburgh University Press (2013) and has published several articles. She is presently writing a book on international licences covering technology transfer agreements, competition law and cross-border dispute resolution for Oxford University Press.
     

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  • In-house counsel
  • Trainee solicitors
  • Private practice lawyers
  • Lawyers
  • Commercial and contract managers
  • Business development managers
  • Licensing executives with little or no experience of drafting and negotiating international licensing agreements
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ADDRESS

Cavendish Hotel
81 Jermyn Street
Piccadilly
London
SW1Y 6JF
United Kingdom

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