Intellectual Property Licensing: An Advanced Level Drafting Workshop

Topics covered by 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?