Charlotte Tillett attended the Life Sciences Patent Network Europe 2019 in London on 21 November for some very interesting debates on the cutting edge legal issues impacting patents in the life sciences arena.
Charlotte enjoyed hosting two roundtable sessions on the topic of patent and knowhow licensing in life sciences – common pitfalls and shared experiences. There were thought-provoking and lively discussions with interesting input from a variety of in-house and private practice delegates. Thank you to all those who attended. The points which drew most discussion and questions were those relating to:
- How to clearly identify the patents and knowhow being licensed – the balance of sufficiently describing the knowhow whilst protecting confidentiality.
- The best way to structure knowhow only licences.
- Assignment of licences and sub-licensing in an ever-shifting sector – issues regarding consent and due diligence.
- Territorial restrictions in licences and protecting IP in those countries where IP protection is harder to achieve.
- Clauses regarding the right to terminate for challenge of validity of patents.
- The importance of carefully identifying ownership of IP rights, particularly for improvements and in joint venture or collaboration agreements.
- The structuring of payment obligations – a mixture of payments on signature, milestone payments and royalty payments. The landscape for royalty payments is becoming increasingly complex, often with varying rates for patents, knowhow, combination and ADC products, with the addition in places of royalty stacking arrangements.
- The optimum dispute resolution forum – the consensus is arbitration.
Do let us know if you would like to discuss any of the above issues.