Drafting and Negotiating IP Terms in Research Contracts
Tuesday 14 February 2017, 09:00 - 17:00
UCL Haldane Room, Wilkins Building
Drafting and Negotiating Intellectual Property Terms in Research Contracts
CPD One-Day Seminar on Tuesday 14 February 2017
About this Course
This practical, ‘hands on’ course provides a structured discussion of various types of intellectual property (IP) clauses in research contracts and other IP-rich agreements. We focus on why each clause is needed, how such clauses tend to be worded and negotiated, alternative clauses that are encountered, and how the outcome of the negotiations may affect your organisation’s interests. Specific topics to be covered include:
- IP terms that are encountered in research grants, EU consortium agreements, Lambert agreements, MTAs and other IP-rich contracts: what is essential (or required by a funder) and what is ‘nice to have’?
- Negotiating issues, including arguments for and against particular IP clauses; compromise proposals
- Drafting: the importance of accurate drafting of IP terms; how to avoid ambiguity
- Managing IP risks through appropriate contract terms and other measures, including due diligence
Please note that this course will focus mainly on IP-related topics. Practitioners who require training in all aspects of contracts (eg work and payment terms, limitation of liability, law and jurisdiction, confidentiality, duration and termination, etc) should consider combining this course with a more general contracts course or ask us to put together a tailored, in-house course for their organisation.
Who should attend
The course is intended for contracts managers, technology transfer and licensing executives, lawyers, patent attorneys and other practitioners whose job involves reviewing or drafting IP terms in research contracts. Attenders will understand the basics of the international IP system, and probably have some practical experience of negotiating IP terms, so that they can participate in the discussion, but they are not expected to have had extensive experience or training in intellectual property. In other words, the standard of the course is higher than a general introduction but not a legal ‘masterclass’.
We also run introductory and advanced level courses in various aspects of IP law and general contract drafting – please ask Mark Anderson for further details.
Preparation for the course?
Although not essential, attenders may find it helpful to read the Lambert IP decision tree materials on the UK IPO website.
6 CPD Points are available for this course from SRA and BSB
|09:30||Introduction to today’s course
What are the key intellectual property (IP) terms and why are they important? Which IP issues come up frequently and how are they often addressed?
|10:00||Research agreements generally
Meaning of Background and Foreground IP and similar terms Terms on introducing/excluding IP from the research collaboration Liabilities for introducing “tainted” IP; warranties and due diligence Ownership of Foreground IP; issues arising from joint ownership Commercialisation rights to Foreground and Background IP Decision-making and management of IP, including payment of costs
|11:15||Specific types of research agreement and associated IP issues
EU Framework VII consortium agreements (and Annex II to grant conditions) UK Government funding terms, including Knowledge Transfer Partnerships HEFCE and similar grant terms Charitable grant terms, including Wellcome Trust and Gates Foundation Lambert agreements; clinical trials agreements (including NHS standard terms) Terms usually required by US universities
|12:00||Group drafting/negotiation exercises; answers|
|14:00||IP terms in preliminary agreements
Letters of intent and MOUs Material transfer and supply agreements (academic and commercial), including Brunswick Human tissue MTAs and patient consent forms Confidentiality agreements Option and evaluation agreements
|14:45||IP terms in commercial agreements
Commercial development agreements Joint venture agreements Licence agreements Contracts of sale and purchase
|15:45||Detailed drafting issues in IP terms
Defining the IP; options and rights of first refusal; licences and assignments; joint ownership terms
|16:15||Workshop on IP terms
Group discussion of some sample IP terms (to extent time permits)
The workshop has been designed, and will be run, by Mark Anderson. His credentials are:
- Solicitor: He is a practising solicitor, who is recommended in Chambers Directory for both life science transactions and IP. He is recommended in the international guide, IAM Patent 1000 2013, as a leading UK lawyer in the field of IP licensing. His blog on IP contracts, IP Draughts, was made a member of the Blawg100 by the American Bar Association in 2012. He is a Certified Licensing Professional (a qualification established by the Licensing Executives Society (US and Canada)).
- Author: He is the author or co-author of 7 practitioner texts on IP and contract drafting subjects, published by OUP, LexisNexis, Bloomsbury and Law Society Publishing. These include:
- Technology Transfer (3rd edn, Bloomsbury, 2010). ‘All practitioners who deal with technology transfer arrangements in England and Wales should own a copy of this work.’ (Journal of E-commerce, Technology and Communications)
- Drafting and Negotiating Commercial Contracts (3nd edn, Bloomsbury, 2010). ‘It is one of the best, if not the best, texts on the principles of commercial drafting… The material is extremely well written and accessible.’ (Student Law Journal).
- Execution of Documents (2nd edn, Law Society, 2008). ‘This is, for a highly technical law book, a riveting read. Keep it on your shelves and you’ll be confident that you will have the answer to most issues about how to make a legal document work.’ (New Law Journal)
- A-Z Guide to Boilerplate and Commercial Clauses (3nd edn, Bloomsbury, 2010). ‘An extremely useful reference work, the book will be of great benefit to in-house counsel drafting commercial contracts’ (the In-House Lawyer). ‘[The book] is very useful and I hope that it will reach a wider audience.’ (His Honour Humphrey Lloyd QC, The International Construction Law Review).
- Drafter: He and his colleagues have drafted hundreds of precedents for commercial contracts, which have been published by OUP, LexisNexis and others. Their latest project is a 1,500-page loose-leaf for OUP comprising precedents and associated commentary on international life science agreements. As General Editor, Mark has coordinated commentary from commercial lawyers in 7 countries, including the UK, US, Germany and France. This has provided him with detailed insights into drafting issues in several common law and civil code jurisdictions.
- Trainer: He has run CPD courses on contract drafting subjects for the last 15 years, and is the course director of a 5-day course, Intellectual Property Transactions: Law and Practice, which is run by the Institute of Brands and Innovation Law at University College London.
If you have any queries about this course please contact Lisa Penfold at the UCL Faculty of Laws by emailing firstname.lastname@example.org
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