About this course
The terms of intellectual property (IP) licence agreements are sometimes lengthy and complex. There are many points of drafting detail whose importance is not always obvious. For example, fine-tuning the wording of terms such as a net-sales definition or a royalty-stacking clause can significantly affect the financial return that the agreement brings. Drafting and negotiating IP licence agreements requires a special set of skills and knowledge.
This practical workshop will provide training and “hands-on” experience in the drafting of IP licence agreements. It is intended for people who already have at least two years’ day-to-day experience of drafting and negotiating IP-related agreements, and who wish to take their skills to an advanced level.
Specific topics to be considered in the workshop will include:
- The grant clause and associated definitions: which IP, which licensed acts, which field and territory, how much exclusivity; is sublicensing allowed; licence or covenant not to sue; improvements; grant-backs; competition law issues; achieving clarity and accuracy, avoiding circularity and other pitfalls.
- Warranties, liability and indemnities: understanding the risks and market practice; getting instructions; thinking through the complexities and drafting with simplicity; avoiding turgid ‘standard’ wording.
- Payment terms: upfront and milestone payments; other fees; royalties on net sales, net receipts or profits; avoiding arithmetic ambiguities; royalty-stacking clauses; withholding tax terms; VAT, interest, and other standard payment terms; auditing and reports; most favoured licensee terms
- Performance obligations: minimum sales, minimum performance, etc; general obligations of ‘best efforts’, etc; resolving disputes over performance; consequences of non-performance, including termination, loss of exclusivity, changing commercial terms.
- Termination: commencement and expiry; rights of termination; consequences of termination
- Law and jurisdiction: choices in international IP agreements, including law, jurisdiction, arbitration, mediation, etc; which is best?
Learning Outcomes
At the end of this course, attenders should have a better understanding of some of the nuances of drafting in IP licence agreements, including the detailed terms of grant clauses, payment terms, risk allocation and performance obligations, and should be better equipped to draft and negotiate IP licence agreements.
Feedback from previous attendees
- I am very pleased that I attended. I will recommend this to my colleagues.
- Very good detailed explanation and presentation. Excellent hand-outs.
- Great discussions of technical and commercial issues – normally glossed over by other courses on the subject
Course schedule:
DAY ONE:
14:00 – Introduction
14:15 – Licence scope and related issues
[comfort break at around 15:00]
15:45 – Warranties, liability and indemnities
[comfort break at around 16:00]
16:45 – Practical exercises; discussion of answers
17:30 Day one ends
DAY TWO
10:00 – Payment terms
[comfort break at around 11:00]
11:05 – Performance obligations
11:45 – Duration, termination, and consequences of termination, Law and jurisdiction, Other terms
[comfort break at around 12:00]
12:30 – Group discussion: finding a workable compromise on contentious clauses
13:00 - Course ends
See the full course details, tutor biography, fees and cancellation terms on the UCL Laws website
