All episodes in the first series of Stevens & Bolton’s "Meeting Room 7" patent and know-how licensing podcast are now available to stream or download both here and on Spotify.
Across eight podcast episodes, our multi-disciplinary life sciences group discuss a number of different areas relevant to patent and know-how licensing in the sector. In each episode, we look at different aspects of licensing arrangements from initial preparations through to termination, and everything in between – from the viewpoints of both a licensor and a licensee.
- In our first episode, we discuss defining the deal at the outset of licensing negotiations, and cover issues that may arise when agreeing the scope of the licensed technology (such as fields of use and exclusivity) and the ownership of improvements.
- Next, we consider how licensors should seek to maintain control over their valuable IP rights, particularly in relation to assignment and sublicensing provisions, whilst striking a balance that allows licensees their necessary commercial freedoms.
- Our third episode covers the central issue of payment terms and common pitfalls, including typical approaches to structuring royalty and milestone payments, negotiating provisions relating to royalty stacking, audit rights and intra-group transfers, and drafting "net sales" and "valid claim" definitions.
- We deal with termination in episode four, specifically what rights parties may have to terminate an agreement including material breach, failure to remedy, change of control and insolvency events. We also look at how parties may deal with the practicalities of termination.
- We discuss the topic of disputes across two episodes. Disputes (part one) focuses on the key contractual provisions necessary to address potential disputes, such as governing law, jurisdiction, dispute resolution mechanisms and enforcement. Disputes (part two) deals more with procedure and strategy, including the enforcement of a judgment or arbitral award.
- In episode seven, we explain what licensors and licensees should consider when negotiating warranties, liabilities and indemnities, and address how to manage issues such as caps on liability and negotiating a compromise position to strike a commercial deal.
- Our final episode "Should I be worried about…?" covers various topical points, including the implications of the Unified Patent Court for patent and know-how licensing agreements, the Technology Transfer Block Exemption Regulation and Brexit.
If you have a question on any of the areas we have covered, or if you would like to request a topic for us to deal with in a future podcast series, please do let us know – we would be delighted to hear from you.
Charlotte Tillett