IP Transactions - The Latest Law & Practice in 1 Day

Introduction

This new full-day course dives deep into the practical and legal aspects of IP transactions, helping you navigate assignments, licensing agreements, and creative commissions with confidence.

Some knowledge of designs, trade marks and passing off would be beneficial but is not assumed. Patent and know-how transactions will only be briefly discussed.

Enhance your professional toolkit and stay competitive in the ever-evolving world of IP. Register now to secure your place in this focused, practical seminar.

What You Will Learn

This course will cover the following:

• What assignments, exclusive and non-exclusive licences, options and shopping options are in law and practice. The legal requirements. Equitable and ‘future’ assignments
• Can all IP transactions be officially registered? Typical UK costs and timings for registrable assignments, licences and security interests. Downsides of non-registration if registrable. Registration of copyright in the USA
• Ability to limit the scope of assignments and licences, including as to time
• The importance of considering from the outset the scope of an assignment, licence or option a party is willing to ‘give’ or needs to have. Regrettably, such an exercise is not always undertaken. Reversion and reversionary interests in IP transactions
• Characterising an IP transaction. Can an agreement described as an assignment really be held to be a licence and vice-versa? Why attempt to re-characterise?
• Commissions: The frequent problem of a commission without a legal assignment of the IP rights. Can an equitable assignment be established in a given factual situation?
• Options: What options are in an IP context. The need to consider the terms and their operation in the context of the factual situation as it exists when the option is entered into, as well as how it might change if the option were later exercised - an important point in fast-moving industries as well as in times of high economic uncertainty
• Shopping Options: What they are and when they can be usefully employed
• Turnaround clauses and how they operate
• NDAs - Non-Disclosure Agreements. Contractual and non-contractual. Difficulties that can and do arise. Refusal by a potential receiving party to enter into an NDA before being given sight of the potential discloser’s IP - what can the potential discloser do?
• Enforceability of agreements to agree. Are best endeavours clauses mere sops?
• Consideration: Some potentially unexpected issues including the wisdom of consideration based mainly or only on royalties; sufficiency of consideration; whether the agreed sum has actually been paid; and agreements executed as deeds
• Possible effect of allegations of undue influence, breach fiduciary duty and/or trust law in an IP transaction. How to try and reduce the risk of such allegations being made
• Patents: In brief, the right for an employee-inventor to claim statutory compensation for an invention of outstanding benefit to the employer