IP Licensing: Your 4 Critical Requirements
Creating new commercial opportunities in intellectual property requires a well-drafted licensing agreement which protects your client’s interest. This panel of experts will guide you through the most essential considerations that will reduce the legal risks and ensure the rights and obligations are maintained or transferred in the intellectual property, in the best manner. This seminar is a must attend for all intellectual property lawyers, commercial lawyers and in-house counsel. WEB2211N61DZ
Description
Attend and earn 3 CPD/CPE units including:
1.5 CPD units in Substantive Law
1.5 CPD units in Professional Skills
OR
3 CPE points in Trade Marks
This program is applicable to practitioners from all States & Territories
Chair: Hayley Tarr, Principal, Tarr Law; Lawyers Weekly Women in Law Awards 2021 Finalist
Professional Skills
2.00pm to 2.45pm Practical Insights on Drafting and Negotiating IP Licenses
- How to design the licence scope: including by getting the right instructions
- Negotiation and drafting tips for licensors and licensees
- A checklist for clearly licensing IP
Presented by Rebecca Slater, Special Counsel, King & Wood Mallesons; Recommended Intellectual Property Lawyer, Doyle’s Guide 2022 and Karen Litherland, Senior Associate, King & Wood Mallesons; Intellectual Property & TMT Rising Star, Doyle’s Guide 2021
2.45pm to 3.30pm Exploring IP Licensing for Your Clients Including Implied Licenses, Tips and Traps
- Recap and refresher on IP in your business: what’s protected and types of IP licences, common kinds of contracts involving IP
- Assignments and licensing of IP rights
- Implied IP licences including scope of implied licence and practical tips
- Navigating joint ownership
- Lessons from the cases
Presented by Alison Jones, Special Counsel, Corrs Chambers Westgarth
3.30pm to 3.45pm Break
3.45pm to 4.30pm Competition Law Implications of Licensing IP Rights
- IP exemption repealed 2019, where are we now?1
- Understanding potential competition risks in IP licences
- What does this mean for you when advising clients or negotiating IP licences?
Presented by Ayman Guirguis, Partner, K&L Gates; Best Lawyers 2023, Competition Law
Professional Skills
4.30pm to 5.15pm Valuing and Structuring Your IP to Maximise Business Value
- Identifying and quantifying all enterprise intangible assets
- Structuring IP: commercial and tax considerations
- IP royalty determination and valuation
- Gaining a voice for IP in transactions, strategy and risk management
Presented by Tim Heberden CA, Partner IP Advisory and M&A Valuations, Deloitte; Registered Business Valuer
Presenters
Hayley Tarr
Hayley has a Bachelor of Science majoring in genetics, a Bachelor of laws with first class honours, and a Masters of Industrial Property Law. She is admitted as a patent and trade marks attorney, a solicitor in the state of Queensland, and an attorney in the state of New York, USA. Having worked for top tier firms such as Allens and Minter Ellison, and taught at Bond University, Hayley founded Tarr Law in January 2020. Tarr Law is a boutique intellectual property law firm, able to assist clients in all intellectual property matters including: trade marks, copyright, designs, domain names, patents, and IP disputes. In addition to running Tarr Law, Hayley dedicates a great deal of time as a volunteer mediator for Bayside Community Legal Centre. Hayley is also a mentor for the Gold Coast Innovation Hub. In other community engagement initiatives, Hayley participated in the St Vinnies CEO Sleepout to raise money for the homeless in June 2022 and will be a speaker and chair at Legalwise Seminars in October and November 2022. Everything Hayley does is for the sake of her two beautiful daughters. When she is not in the office, you’ll find her seeking out new and adventurous experiences with her girls. Please do not hesitate to reach out. Hayley would love to assist you with your intellectual property needs.
Rebecca Slater
Rebecca Slater is a special counsel in the M&A team in Brisbane and specialises in commercial legal matters with a focus on intellectual property, technology and data protection. She works for clients across a range of industries, including technology, education, energy and infrastructure, hospitality, retail and banking. She has expertise in alternative dispute resolution. Rebecca has a Master of Laws degree from Harvard Law School, as well as a degree in journalism. She is a trained mediator and has lectured at the University of Queensland on intellectual property, technology and privacy related matters. Rebecca is recognised as a Recommended Intellectual Property Lawyer, Queensland, Doyle’s Guide 2022.
Karen Litherland
Karen is a senior associate at King & Wood Mallesons specialising in IP commercialisation. She advises the public and private sector across a range of industries on intellectual property commercialisation, data and technology law matters, including in relation to strategy, ownership, enforcement, rebranding, and corporate transactions. Karen has advised a number of high profile organisations on complex strategic projects involving the commercialisation of patents, software, data, trade marks and plant breeders rights. She has also advised organisations on a number of IP ownership issues, including spin off arrangements and disputes.
Alison Jones
Alison Jones is a Special Counsel in the intellectual property practice of Corrs Chambers Westgarth, Australia’s leading independent law firm. Alison specialises in intellectual property and consumer protection law, and advises clients across all business sectors on a range of IP, regulatory and related areas including IP strategy, advising on commercial arrangements of various kinds and contract drafting, advertising and marketing, competition and consumer law issues, IP enforcement, and commercial regulatory (including food law, cosmetics, life sciences and therapeutic goods regulation, product liability risk and recall, privacy and data protection). Alison's experience in this area also includes secondments at leading companies in IP-driven sectors, including fast moving consumer goods and life sciences.
Ayman Guirguis
Ayman Guirguis heads up the Competition and Consumer Law team at K&L Gates in Australia. He advises on all aspects and issues of competition including the implications of mergers, joint ventures and supply chain issues; defending clients alleged to be parties to cartels or other anticompetitive arrangements; and consumer law issues including responding to ACCC investigations and defending prosecutions commenced by the ACCC. Ayman was formerly a senior officer of the ACCC. Ayman is named as a leading individual for Competition/Antitrust in Chambers Global and Best Lawyers.
Tim Heberden CA
Tim is a specialist in intellectual property valuation, royalty determination and the monetisation of technology, data and brands. He is named in the IAM Strategy 300 – the World’s Leading IP Strategists. Tim is technical author of the ‘Guidance Note on the Valuation of Intellectual Property’ (issued by RICS), and is the author of a chapter on IP royalties for ‘International Licensing & Technology Transfer’. Having specialised in IP economics for twenty years, Tim is able to integrate the economic, functional and legal characteristics of IP assets into robust valuations and royalty opinions. His team use a range of value-based metrics to provide insights that unlock hidden IP value, and mitigate the risk associated with technology data and brands. Tim is a CA, MBA, Registered Business Valuer and Fellow of the Royal Institution of Chartered Surveyors, a Fellow of the Australian Marketing Institute and a Certified Practicing Marketer.