Drafting & Negotiating Patent Licences - The Key Issues

Introduction

Not all IP can be developed or commercialised in-house.

This new virtual classroom seminar will look at the licensing of technology, whether you are looking to monetise technology which you cannot commercialise yourself or to acquire the right to use technology from elsewhere.

It will consider points from the perspective of a licensor and licensee and touch briefly on some issues raised as technology changes such as AI.

The session will look at the key elements of a licence so that you can focus on what is important for you, identify anything which is missing from the licence and avoid any common pitfalls. It will also look at the scope of the licence grant and what is appropriate in different circumstances, plus how to structure payments provisions and avoid royalty leakage.

Changes in the law and cases which impact on IP licences will be considered and, in particular, it will discuss the impact of the new Unitary Patent (‘UP’) being introduced by the EU with the anticipated timetable for the Unified Patent Court (‘UPC’) to open being 1 April 2023.

What You Will Learn

This live and interactive session will cover the following:

• Should you grant exclusivity and, if so, should it be limited in scope?
• Specific considerations for different technology areas e.g., life sciences, and types of technology such as AI, open-source software
• Issues raised by sub-licensing
• How to address performance issues
• Who should own improvements to the licensed technology?
• How to maintain the quality of what the ultimate customer receives
• What are relevant milestone payments to include?
• How do you choose a royalty base and royalty percentage?
• What is royalty stacking and when is it relevant?
• Avoidance provisions to include to prevent royalty leakage
• Who will maintain any patents and deal with any infringements?
• How the UP might impact your licence

Recording of live sessions: Soon after the Learn Live session has taken place you will be able to go back and access the recording - should you wish to revisit the material discussed.