Drafting & Negotiating Patent Licences - The Key Issues

Introduction

This virtual classroom seminar will look at the licensing of technology, whether to monetise technology or to acquire the right to use technology from elsewhere.

It will consider points from the perspective of a licensor and licensee and how licences seek to balance both parties’ interests.

The session will look at the key elements of a licence, including how to identify provisions which might be missing from a draft licence and avoid any common pitfalls.

There are specific considerations for different technology areas (e.g. life sciences, AI, open-source software), different licensees (e.g. universities) and the impact of the Unitary Patent (‘UP’).

They are often international agreements that affect the tax, governing law and jurisdiction considerations.

The devil is in the detail and small changes can really impact the financial return.

What You Will Learn

This live and interactive session will cover the following:

• Scope of licences, including additional IP that may need to be included
• Issues raised by sub-licensing
• How to address performance issues
• How to structure payments provisions (including royalty stacking and withholding taxes) and avoid royalty leakage
• Key anti-trust considerations for patent licences
• Appropriate warranties and indemnities to balance risk and liability

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.