November 18, 2021
Episode 3 of our patent licensing podcast from Meeting Room 7 focuses on payment terms and the common pitfalls. Charlotte Tillett, head of Stevens & Bolton’s life sciences group, is joined by associates Tom Collins and Kate Maguire to discuss the key considerations for both licensors and licensees when drafting payment terms in a patent licence agreement. The episode includes:
- Typical approaches to structuring royalty, milestone and annual lump-sum payments
- Common areas for negotiation including royalty stacking, audit rights and intra-group sales
- Different types of discounts and special deals often seen within licence agreements – and drafting pitfalls to avoid
- The importance for both parties of clearly defining terms such as 'licensed product’, ‘net sales’ and ‘valid claim’
November 3, 2021
In this second episode, “Maintaining control,” we discuss the key points for parties to consider when valuable IP rights are being licensed and the owner is looking to control and protect this IP. This includes:
- Common issues that arise when negotiating assignment and sublicensing provisions in IP licences.
- How to strike the balance of protecting the licensor’s valuable IP, whilst allowing the licensee the commercial freedom it needs to get medicines to patients.
- What can happen following an acquisition of a party and how to address this in licence agreements (including change of control termination rights).
September 23, 2021
Welcome to Meeting Room 7, a new podcast from Stevens & Bolton.
In this series we will be discussing patent and know how licensing in the life sciences sector. In each episode our IP team will look at different aspects of licensing arrangements, from defining the deal to termination and everything in between. We will share practical tips for licensors and licensees on how to negotiate and draft agreements that work, highlight new developments and trends in the sector and get to the bottom of thorny issues that are often misunderstood.
In this first episode “Defining the deal” we cover:
- Why it is important to spend time agreeing the headline commercial points at the outset of the relationship
- Key issues that may arise when negotiating and defining the scope of the licensed technology (including fields of use, exclusivity and due diligence)
- Considerations concerning the ownership and licensing of improvements (including competition issues)
- Common issues that arise when licensing know how
We would welcome your questions and feedback so let us know if there is anything you would like us to cover in future episodes here.