Course overview
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 training course has been designed to focus on the 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.
Learn about the different types of IP agreements and how to protect and exploit your rights to the best advantage for your business through carefully worded clauses. The use of practical exercises using example clauses will be worked through and discussed to embed and consolidate learning.
Key topics to be covered include:
- The legal framework for international IP agreements
- Dealing with patents, trade marks, trade secrets and domain names
- The dangers and opportunities of IP agreement templates
- Commercial expectations and industry sector differences
- Key terms, choice of law and jurisdiction
- Contentious IP contracts and dispute resolution
- Forbidden clauses - competition law issues
- Brexit-proofing your agreements
CPD Hours: 6
Course Content
- Day 1
- Welcome and introduction to the course
- General Aspects of IP Agreements
- Types of licences
- Elements of the agreement - part 1
- Elements of the agreement - part 2
- Practical exercise on drafting international IP agreements
- Elements of the agreement - part 3
- Elements of the agreement - part 4
- Dispute resolution in agreements
- Practical exercise on drafting international IP agreements
Speakers
Brian Kacedon
Brian Kacedon, Partner at Finnegan and based in New York, is a recognized authority in IP transactions. He has drafted and negotiated hundreds of agreements across all technologies and is designated as a Certified Licensing Professional (CLP). Brian has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience.
Brian focuses on patent and technology licensing and
litigation. In his transactional practice, Brian assists clients in
conducting market assessments for their patents, conducts licensing
negotiations, drafts licensing agreements, and participates in related
litigations. He routinely negotiates and drafts complex license and
collaboration agreements for both small and large pharmaceutical
companies, many with total payments of hundreds of millions of dollars.
Brian’s experience includes setting up and directing international
patent licensing and enforcement programs, including one that resulted
in more than 500 license agreements.
Over the course of his career, Brian has drafted hundreds of patent, know-how, and software license agreements as well as joint development, collaboration, and settlement agreements for many industries, including pharmaceutical, medical device, software and consumer electronics. He has assisted several leading technology companies in negotiating and drafting licenses for wireless technologies, as well as navigated related standards-setting issues.
Brian has extensive experience litigating agreement disputes. He has appeared as counsel in multiple litigations and arbitrations, including a trade secret misappropriation, for clients in industries ranging from pharmaceuticals to semiconductors. Brian has also been retained as an expert witness relating to the interpretation of license agreements.
Cara Regan
Cara Regan is an Associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. She works on patent and trade secret litigation at every stage, from the strategic decision to file a proceeding through appeal. Her experience includes district court and International Trade Commission (ITC) actions; post-grant challenges at the Patent Trial and Appeal Board (PTAB); and appeals at the U.S. Court of Appeals for the Federal Circuit, where she clerked.
Cara has been involved in district court proceedings, ITC investigations, contentious proceedings before the U.S. Patent and Trademark Office (USPTO), and appeals. She has experience with pre-suit due diligence, discovery, depositions, claim construction, summary judgment motions, Daubert motions, and post-trial briefing, as well as with managing related PTAB proceedings and pursuing appeals. She also assists clients in evaluating infringement risks and negotiating license agreements. Her technical expertise encompasses a wide range of technologies, including medical devices, software, mobile phones, laptops, automobiles, and consumer products.
Nessa Khandaker
Nessa Khandaker is a solicitor in Finnegan’s London office, advising on the full spectrum of intellectual property rights, privacy and advertising law. She works with clients across sectors including pharmaceuticals, medical devices, telecommunications, fashion, food and beauty.
Nessa has extensive trial and appellate experience in life sciences and high-tech patent disputes, as well as copyright, trade mark and passing-off matters. She has acted before the English High Court, the Intellectual Property Enterprise Court and the UK and EU Intellectual Property Offices.
In addition to her disputes practice, Nessa advises on intellectual property transactions, including licensing, commercialisation and collaboration arrangements. She supports clients on the protection, exploitation and transfer of intellectual property rights. She has a particular focus on advertising and marketing law, advising on regulatory compliance and dispute avoidance.
Who Should Attend
Who should attend?
This training course has been specifically designed for:
- Patent attorneys
- In-house lawyers
- Legal executives
- Commercial and contracts managers
- Clinical and IP contract specialists
- Product development managers
- Research managers
And other professionals who are involved in drafting or managing commercial IP agreements.
Location
ADDRESS
The Rembrandt Hotel
11 Thurloe Place
London
SW7 2RS
United Kingdom
DIRECTIONS
Opposite V&A Museum.
Nearest underground station: South Kensington.
