Commercialising IP: Licences, Contracts, and Sales
So you or your client has some IP. That’s great and all, but it doesn’t mean a thing if you can’t capitalise on the opportunities it provides. IP is only as valuable as its commercial prospects, so you better know how to make it work for you or your client. From licensing to contracting to sales that make legal AND business sense, arm yourself with the strategies you need to give true value to IP.
Description
Chair: Ben Hamilton, Partner, Hall & Wilcox; Best Lawyers 2018, Intellectual Property Law
2.00pm to 3.00pm
IP Licensing and Commercial Arrangements: Legal Considerations and Business Decisions
- The essentials: background; parties; term; territory; subject matter; scope; licence fees and royalties payable; minimum performance criteria; ‘improvements’
- Can the subject matter be licensed in the first place (e.g. confidential information)?
- Right to use vs licence: Is there a difference?
- Licensor rights: inspection of premises, accounts and records
- Protecting the subject matter of the licence
- Relevant laws; who takes action; assistance from the other party; product recalls
- Warranties, indemnities and insurance: limiting liability and key terms
- Who indemnifies, for what purpose and for what amount?
- What should happen on termination?
Presented by David King, Principal, Wrays
3.00pm to 4.00pm
Managing IP in the Contracting Process
- Common mistakes: how to avoid under-protecting your IP or losing it forever
- The potentially tangled web of IP joint ownership
- Managing risk and liabilities; warranties and indemnities
- What you can and cannot do with another party’s IP
- Example IP clauses: what works, what doesn’t
Presented by Gordon Hughes AM, Principal, Davies Collison Cave Law; Preeminent Commercialisation & IP Transactions Lawyer and Leading Copyright & Soft IP Lawyer, Doyle’s Guide 2017
4.15pm to 5.15pm
Preparing Intellectual Property for Sale
- The importance and complexity of pre transaction intellectual property due diligence
- Pre-sale assignments to remedy ownership defects
- Selling unregistered IP
- Common IP issues relating to the sale of a businesses
- IP issues relevant to a change of shareholding
- Conducting IP Audits
Presented by Michelle Dowdle, Special Counsel, Sladen Legal
Attend and earn 3 CPD units in Substantive Law