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IP Licensing
  1. IP Licensing

    Whether acting for licensors or licensees, we develop effective strategies for the protection, use and licensing of our clients’ IP rights.

    No business operates in a vacuum and the arrangements by which IP, resources and expertise are shared have a significant impact. We help businesses to ensure that they have an appropriate level of control over the technology, brands or other assets that they own – both to maximise commercial advantage and prevent disputes arising.

    We have significant experience supporting clients with licensing across a number of sectors including life sciences, technology, and consumer and luxury goods. Our clients include entrepreneurs, start-ups, SMEs and large corporates as well as academic institutions.

    We regularly advise clients on key licensing issues such as:

    • Clearly defining the scope of the licence, and heads of terms
    • Maintaining control of the licensed IP whilst allowing a licensee the commercial freedom that it needs
    • Payment terms and structuring
    • Termination rights and consequences of termination

    The licensing of IP can be of central important to businesses and can crop up in many types of agreements. We assist with traditional licensing arrangements as well as licensing issues which arise in agreements such as:

    • Patent and know-how licences
    • Trade mark and brand exploitation/marketing agreements
    • Copyright licences
    • Technology transfer agreements
    • Software development and licensing arrangements
    • Research and development agreements
    • Collaboration arrangements
    • Group IP and intragroup arrangements

    We have particular expertise and depth of experience in patent and know-how licensing in the life sciences sector. To hear more on this, listen to our podcast – Meeting Room 7 – for everything you need to know about patent and know-how licensing in this area. Click here to listen.

     

  2. Our experience

    • Providing long-running support to a global biotech company in relation to its international patent and know-how licensing operations, including drafting and negotiating research evaluation and commercial licences and technology transfer agreements.

    • Advising a research institute on its obligations as lead party for a research collaboration and drafting a four-party international research collaboration agreement.

    • Preparing commercial licensing arrangements on a pro bono basis for the Covid-19 Volunteer Testing Network to launch a voluntary laboratory network to expand COVID-19 testing for GPs and other healthcare workers across the UK.

    • Advising on and preparing an international trade mark licence agreement relating to prosthetics and medical devices.

    • Assisting an international pharma company in relation to a complex series of patent licence agreements and marketing authorisation relating to the sale of a widely available over the counter pharmaceutical products.

    • Advising an international shipping organisation on copyright licensing arrangements including on royalty obligations and preparing copyright licence.

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