IP Licensing: An Advanced Level Drafting Workshop

Tuesday 3 October 2017, 09:00 - 17:00

Woburn House Conference Centre, 20 Tavistock Square, London WC1H 9HQ

Course Dates:
Tuesday 3rd October 2017

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?

Who should attend?
This workshop is designed for principally for IP practitioners who are familiar with contract law, IP law and the basic principles of contract drafting, and would like to increase their knowledge, and practise their drafting skills, with other experienced practitioners.

Attenders will have at least two years’ day-to-day experience of drafting IP-related agreements, and will probably have attended courses on the subject, prior to attending the workshop.  This course is designed to be complementary to:

This course focuses on the detailed commercial, legal and practice issues that frequently arise when drafting IP licence agreements, and on how to take account of these issues in the drafting.  We will be referring to examples of wording from a licence agreement throughout the day.

Preparation for the course
Although not essential, attenders may find it helpful to read the following practitioner texts as preparation for the workshop:

  • Technology Transfer, Mark Anderson (3rd edition, Bloomsbury Professional, 2010) – includes discussion of licence agreements from perspective of English law
  • Drafting Patent License Agreements, Brunsvold et al (7th edn, Bloomberg BNA, 2012) – excellent US text

Comments from previous attenders of this course:

  • 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

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.

Course Schedule

  • 09:00 – Registration
  • 09:30 – Introduction
  • 09:45 – Licence scope and related issues
  • 11:00 – Refreshments break
  • 11:15 – Warranties, liability and indemnities
  • 12:00 – Practical exercises; discussion of answers
  • 12:45 – Lunch
  • 13:45 – Payment terms
  • 14:45 – Performance obligations
  • 15:15 – Refreshments break
  • 15:30 – Duration, termination, and consequences of termination, Law and jurisdiction, Other terms
  • 16:30 – Group discussion: finding a workable compromise on contentious clauses
  • 17:00 -Course ends


If you have any queries about this course please contact Lisa Penfold at the UCL Faculty of Laws by emailing lisa.penfold@ucl.ac.uk

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