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Reviewing and Negotiating Technology Transfer and Licensing Agreements Training Course (ONLINE EVENT: October 17-18, 2024)

  • Training

  • 2 Days
  • Oct 17th 09:30 - Oct 18th 17:00 GMT+1
  • Falconbury Ltd
  • ID: 5968712

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.

Benefits of attending:

  • Learn how to critically review the terms in international technology transfer and licensing agreements
  • Assess the benefits and concerns of the contracting parties under an international technology transfer and licensing agreement
  • Understand EU law governing international technology transfer and licensing agreements
  • Review the impact of the Brexit Withdrawal Agreement
  • Draft and negotiate key terms in an international technology transfer and licensing agreement more effectively
  • Effectively negotiate royalty rates to the best commercial advantage
  • Understand and advise on cross-jurisdictional concerns and key terms

The key objectives

By attending this course you will:

  • Understand how to critically review the terms in an international technology transfer and licensing agreement
  • Learn how to assess the benefits and concerns of the contracting parties under an international technology transfer and licensing agreement
  • Gain knowledge of EU law governing international technology transfer and licensing agreements
  • Be able to draft and negotiate key terms in an international technology transfer and licensing agreement more effectively
  • Find out how to negotiate royalty rates more successfully
  • Appreciate and be able to better advise on cross-jurisdictional concerns and key terms

Certifications:

  • CPD: 12 hours for your records
  • Certificate of completion

Course Content


Day 1
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)
    • Market thresholds and scope of application
  • Technology Transfer Block Exemption Regulation (TTBER 2014)
    • Scope and Restrictions
  • Block exemption governing R&D
Ancillary agreements
  • Confidentiality agreement
  • Materials transfer agreement
  • Memorandum of understanding
  • Option agreement
Technology transfer agreements
  • Set-up - licence and assignment
  • Strategic and legal concerns of the prospective licensor
  • Key concerns reviewed
    • Term
    • Assignment
    • IP
    • Liability, disclaimers and indemnities
  • Benefits and disadvantages of licensing technology
  • Sub-licensing considerations
  • Legal safeguards during the pre-negotiation phase
Day 2
International contract disputes
  • Jurisdiction
  • Jurisdiction rules under EU law
  • Jurisdiction agreements and their status in EU law
  • Choice of law rules
  • Recognition and enforcement of arbitral awards and foreign judgments
  • Review of the impact of the Withdrawal Agreement (Brexit deal/no deal)
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
  • Arbitration agreements checklist and essential drafting tools
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

Course Provider

  •  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.
     

Who Should Attend

All those who need to gain knowledge and experience of cross-border commercial contracts including:

  • In-house counsel
  • Commercial and contract managers
  • Business development managers
  • Trainee solicitors
  • Attorneys
  • Private practice lawyers
  • R&D personnel
  • Licensing executives wanting a refresher

By the end of this seminar, participants will be able to:

  • Understand and draft international technology transfer and licensing agreements
  • Draft and negotiate key terms more effectively
  • Understand and advise on cross-jurisdictional concerns and key terms