Home  |  About Us   |   Be Our Speaker  |  Terms & Conditions  |  Connect With Us
Executive Education
Clariden Leadership Institute
Negotiating and Drafting Technology Transfer, Licensing And IP Agreements (Melbourne)
Rob Mclnnes
DibbsBarker
Rob Mclnnes, DibbsBarker
  • Ranked Australia’s highest recommended patent and technology licensing lawyer in the IAM Patent 1000: The World’s Leading Patent Practitioners by Intellectual Asset Management magazine
  • Listed in the IAM Strategy 300: The World’s Leading IP Strategists, and recognized as ‘IP Star’ by Managing Intellectual Property magazine
  • Former President of the Licensing Executives Society of Australia and New Zealand and US-based Certified Licensing Professional


Rob Mclnnes is a highly sought-after technology lawyer with more than 35 years of Technology Transfer, Licensing and IP Agreements consulting experience for start-ups, multinationals and research institutions across a wide range of industries such as Life Sciences, Healthcare, Pharmaceutical, Energy, Resources, Infrastructure, Services, Technology and more. Since 2010, Rob has been ranked by Intellectual Asset Management magazine as Australia’s highest recommended patent and technology licensing lawyer in the IAM Patent 1000: The World’s Leading Patent Practitioners. He is also named in the IAM Strategy 300: The World’s Leading IP Strategists, and as an ‘IP Star’ by Managing Intellectual Property magazine. He is one of only a handful of private practice lawyers in Australia to have met the requirements for the US-based Certified Licensing Professional qualification. He has a particular personal interest in science and technology, and gained a thesis-based Honours degree in chemistry prior to becoming a lawyer. In recent years, the majority of Rob’s deals have involved cross-border licensing, helping clients establish development and commercialization relationships in North America, Europe and Asia.

 

Rob is also a regular presenter on IP-related subjects at leading industry, government and technology forums. Previously, Rob is the President of the Licensing Executives Society of Australia and New Zealand, as well as Vice-Chair of the Patent & Technology Licensing Committee and Chair of the Industry/University Transactions and Life Sciences Licensing Committees of Licensing Executives Society International.

 

Testimonials:

"Engaging and highly professional, Rob was well-received by all the delegates, and his talks sparked energetic questions from the audience." Linda Glave – Buy/Supply Chain Professional

 

“Rob has provided a valuable service to our business for a number of years. I have no hesitation in recommending him to our colleagues and associates.”

Christopher Kelleher – Business Advisor at NSW Business Chamber

Program Summary

 

The first series of the programs is to help you discover how technology transfer and IP contracts are structured and the purpose and meaning of common clauses, and equip you with effective negotiation skills and techniques to achieve successful partnership outcomes.

 

Led by Rob Mclnnes, a highly sought-after technology lawyer with more than 35 years of technology transfer and IP licensing consulting experiences, the program will provide you with clear legal knowledge and in-depth industry insights on the various types of contracts that are important in IP licensing, research and commercialization and how to select the right contract for the right purpose. You will also learn to utilize effective frameworks and tools to understand and draft the key terms and conditions within an IP licensing agreement for high commercial returns while minimizing, reallocating and avoiding potential legal risks and liabilities. Furthermore, you will learn to understand the perspectives of licensor and licensee when facing various difficult situations during each stage of the agreement lifecycle and utilize powerful negotiation strategies and techniques to professionally manage and resolve each situation.

 

Packed with real-life case studies and interactive discussion sessions, you will leave this program with a strong legal knowledge and powerful negotiation techniques that will improve your skills, efficiency and confidence in drafting and negotiating for successful commercial outcomes while protecting your organization’s interest.



Programs, dates and locations are subject to change. In accordance with Clariden Global policy, we do not discriminate against any person on the basis of race, color, sex, religion, age, national or disability in admission to our programs.

Introduction

 

Many companies understand the importance of managing technology transfer, licensing and IP agreements; however most companies are still facing difficulties in negotiating and drafting these agreements effectively. Keeping that in mind, more than often, companies do not get the license agreements the technology deserves. Rather, they get the license agreement they negotiated and drafted. Therefore, it is vital that companies fully understand and master the skills to effectively negotiate and draft these agreements.

 

The problem here is that most companies have a poor understanding of contractual arrangements for technology transfer, licensing and IP agreements. In addition, they are hindered by ineffective negotiation strategies to resolve technology transfer and IP licensing related disputes to achieve a “win-win” agreement. Furthermore, many are unable to clearly define the scope of coverage, liability and obligations within IP licensing agreements to safeguard their technology investment from unexpected legal risks.

 

Without in-depth knowledge and effective strategies to clearly draft and negotiate your technology agreements, you may face poor delivery of intended agreement content, high commercial and legal risks, loss of IP, major conflicts and disputes and eventually, loss of business profit and high legal charges.

 

Led by Rob Mclnnes, a highly sought-after technology lawyer with more than 35 years of technology transfer and IP licensing consulting experience, this comprehensive two-day program will provide you with a clear legal knowledge and in-depth industry insights on the various types of contracts that are important in IP licensing, research and commercialization and how to select the right contract for the right purpose. You will also learn to utilize effective frameworks and tools to understand and draft the key terms and conditions within an IP licensing agreement for high commercial returns while minimizing, reallocating and avoiding potential legal risks and liabilities. Furthermore, you will learn to understand the perspectives of licensor and licensee when facing various difficult situations during each stage of the agreement lifecycle and utilize powerful negotiation strategies and techniques to professionally manage and resolve each situation.

 

Packed with real-life case studies and interactive discussion sessions, you will leave this program with a strong legal knowledge and powerful negotiation techniques that will improve your skills, efficiency and confidence in drafting and negotiating for successful commercial outcomes while protecting your organization’s interest.

What You Can Expect

 

  • Gain practical future-oriented perspectives and proven commercial strategies to manage your technology agreements
  • Understand the types of contracts that are important in IP licensing, research and commercialization
  • Utilize strategic frameworks to clearly draft and structure an effective IP licensing agreement
  • Master powerful negotiation and drafting techniques to minimize, reallocate and avoid legal risks and liabilities
  • Professionally manage and resolve difficult situations faced during each stage of the agreement lifecycle
  • Align licensor and licensee business needs to achieve mutually beneficial outcomes for greater commercial returns

Who Will Benefit Most

 

This course is designed for anyone responsible for negotiating and drafting technology transfer, licensing and IP agreements, including business development professionals working in established healthcare, pharmaceutical, technology and engineering companies; technology transfer managers and staff in universities and other public sector research institutions; founders and senior executives of IP-based start-up and spin-off companies; technology investors; lawyers and other consultants who advise and represent the above; scientists and engineers looking at a career in commercialization.

Program Outline

 

DAY 1 (09:00 - 17:00)

 


Morning

 

Contracting Practicalities for Non-lawyers (in the context of IP commercialization)

  • Contracting as a management responsibility, and operational activity
  • Selecting the right contract for the occasion
  • Use of MoUs and term sheets
  • A review of types of contracts that are important in IP licensing, research and commercialization

 

Preparation for Negotiation (from the start of business development to the night before)

  • Tips for planning and preparation when negotiating commercialization contracts
  • Tools for evidence-based negotiation including identifying benchmark deal terms
  • Forming and briefing your team
  • Information as to the currency of negotiation; due diligence investigations

 

Licensing Fundamentals (the four categories of licence terms, discussed by reference to a practical scenario)

  • Licensed subject matter - do you know what you are licensing?
  • Commercial terms - understanding what really drives commercial returns (and it probably isn’t the royalty rate)
  • Allocation of risk and liability - what’s normal, what’s fair and what just has to be lived with
  • The ‘boilerplate’ - what shouldn’t be left to the lawyers?

 

Afternoon (licensing deep dive, from licensor and licensee perspectives) 


Hard Issues in Licensed Subject Matter

  • The importance of knowing what is being licensed
  • Separate licences for separate rights
  • Improvements: the challenge of definition - when is an improvement an “improvement” and not something else, tips for breaking deadlocks, useful compromises
  • When is a licence not a licence?
  • Controlling sub-licensing

 

Hard Issues in Commercial Terms

  • Understanding the full range of financial terms
  • The ‘royalty base’: often more important than the rate
  • Royalty where there is sub-licensing
  • Step-up and step-down royalties
  • Co-promotion and other JV-like terms
  • Performance obligations: often more important than the royalty
  • Creative ways to structure performance obligations
  • Considering the consequences of early termination

 

Hard Issues in Allocation of Risk and Liability

  • Risk associated with the licensed IP
  • Risk associated with the IP of others: freedom to operate and royalty stacking
  • Risk associated with licensed products: who is responsible if they don’t work, or are dangerous?
  • The art of drafting acceptable but useful indemnities and warranties
  • Practical risk management as a way of reaching agreement
  • Option structures as a risk management tool

 

DAY 2 (09:00 - 17:00)

 

Morning (other factors that matter in IP commercialization)

 

R&D Collaborations (what will be delivered, and what will be paid?)

  • Inter-institutional, research-industry and industry-industry collaborations
  • Material transfer agreements; when will an MTA suffice?
  • Evaluation agreements and the battle over IP and information
  • Reasons for embracing or avoiding joint ownership of IP; alternatives to joint ownership
  • IP management where joint ownership is unavoidable
  • Structuring ‘options’ to own or license IP
  • Special issues in dealing with public sector research organizations

 

International Issues (can’t we just say local law governs?)

  • The international nature of IP licensing
  • The unavoidable application of (sometimes bizarre) overseas laws
  • Avoiding breach of foreign competition laws that could invalidate your agreement
  • Governing law: why it doesn’t work just to choose your local law
  • Special issues in the USA, Europe and China

 

Modelling a Licensing Deal (a key aspect of being ready for anything)

  • Introduction to a discounted cash flow model of a licence deal
  • Finding information for deal modelling
  • Use of net present value comparisons to gauge fair outcomes
  • The deal model as a negotiation tool

 

Afternoon (getting the deal done!)

 

Negotiation Skills and Techniques

  • The ‘general theory of contracts’
  • Understanding your ask; best imaginable, best achievable, and bottom line
  • Aligning your team
  • Preparation, then preparation, then more preparation
  • Phases of negotiation; proposing, listening, exploring, bargaining, deadlock-breaking and confirming
  • Dealing with the ‘dirty tricks’ of negotiation
  • Living with the deal

 

Practical Exercise: Developing and Defending an ‘Ask’ (based on day 1 scenario)

  • Preparing a term sheet setting out a set of desired deal terms, as licensor or licensee
  • Presenting the terms to the group, with justification

 

CFOs Leadership :
Experience Clariden
Discover how our leadership program has shaped the perspectives of CFOs across Asia
 
Venue: InterContinental Melbourne The Rialto
Date: 3 - 4 Apr 2017
Faculty: Rob Mclnnes
Early Bird 1: AU$2,595 (by 7 Feb 2017)
Early Bird 2: AU$2,795 (by 7 Mar 2017)
Regular Fee: AU$2,895
Group Discount: 2nd participant get 10%, or register 3 participants and 4th participant get a complimentary seat
(1 discount scheme applies)
Contact: karen.woods@claridenglobal.org
 
 
More Programs
Identifying Strategic Acquisitions and Structuring Successful M&A Deals (Singapore)
- Thomas Kessler
M&A Financial Modeling (Singapore)
- Thomas Kessler
Reinventing Organizational Design and Structure: Optimizing Strategy, People, Processes, Accountabilities and Functions (Zurich)
- Paul Gustavson
Implementing and Managing Preventive and Predictive Maintenance (Melbourne)
- Peter Ormond
HR Analytics, Metrics and Measurement (Zurich)
- Jon Ingham
View All Programs >
 
 
   
Home | About Us | Be Our Speaker | Press Release | Terms & Conditions | Connect With Us
Copyright © 2011 Clariden Global, all rights reserved.