Stevens & Bolton Podcast Channel

Meeting Room 7 – The Patent Licensing Podcast – The Unified Patent Court

Episode 9 of our patent licensing podcast from Meeting Room 7 focuses on the new Unified Patent Court (UPC) system in the EU. Charlotte Tillett, head of Stevens & Bolton’s life sciences group, is joined by Senior Associate Tom Collins and Associate Kate Maguire to discuss the key considerations for both licensors and licensees in preparation for the UPC’s opening in June 2023. The episode includes:

• An overview of the UPC, the new Unitary Patent (UP), and the opt-out transitional period
• A discussion about the likely advantages and disadvantages of the new system
• Considerations for licensors, such as the risk of central patent revocation and exclusive licensees’ rights to independently commence proceedings before the UPC
• Considerations for licensees, such as opting-out, UP designation, UPC proceedings and consultation obligations

Meeting Room 7 - The patent licensing podcast - Should I be worried about…?

Episode 8 of our patent licensing podcast from Meeting Room 7, the final episode in this series, answers the question “Should I be worried about…?” in relation to some of the key issues that underpin important licensing provisions.

Charlotte Tillett, head of Stevens & Bolton’s life sciences group, is joined by Professional Support Lawyer Astrid Arnold and Associate Melissa Turner to discuss some thorny issues and their implications on patent and knowhow licensing agreements. The episode includes:

• The Unified Patent Court – a brief update on the status of the UPC, why it is still relevant to the UK, and issues to be considered for the terms of a patent licence agreement
• An exclusive licensee’s standing to sue under an agreement - how an exclusive licensee can protect its position particularly in light of the recent Neurim case
• Brexit – key provisions to cover in an agreement and important points on enforcement mechanisms post-Brexit
• The Technology Transfer Block Exemption Regulation – its status in the UK, and the points you need to know on improvements and no challenge provisions

Meeting Room 7 - The patent licensing podcast - Warranties, liabilities and indemnities

Episode 7 of our patent licensing podcast from Meeting Room 7 focuses on warranties, liabilities and indemnities. 

Charlotte Tillett, head of Stevens & Bolton’s life sciences group, is joined by Senior Associate Tom Collins and Partner Gustaf Duhs (as a special guest from our commercial and regulatory team) to discuss what needs to be considered - by both the licensor and licensee - when it comes to negotiating warranties, indemnities and liability provisions. The episode includes:

• An overview of warranties, indemnities and liabilities and the interaction between these provisions in licence agreements
• The typical types of warranties and indemnities that a licensor and licensee would expect to see in agreements of this nature, with a particular focus in the life sciences sector
• A discussion on the different ways in which a party may seek to limit its liability to the other party in a licence agreement
• How to tackle thorny issues such as caps on liability and negotiating a compromise position to strike a commercial deal

Meeting Room 7 – Patent licensing – Disputes part 2

Episode 6 of our patent licensing podcast from Meeting Room 7 focuses on disputes.

Charlotte Tillett, head of Stevens & Bolton’s life sciences group, is joined by Head of IP Tom Lingard and dispute resolution partner Catherine Penny to discuss the practical aspects of disputes that might arise from patent and know how licensing agreements. Following on from the last episode, Disputes: Part 1, in which we covered the key provisions in an agreement required to properly address potential disputes, part 2 looks at the procedure, strategy and tactics.

 The episode includes:

• Pre-action considerations and what to do when issues first arise
• Tactics
• Settlement opportunities
• The enforcement of a judgment or arbitral award

Meeting Room 7 - The patent licensing podcast - Disputes part 1

Episode 5 of our patent licensing podcast from Meeting Room 7 focuses on disputes.

Charlotte Tillett, head of Stevens & Bolton’s life sciences group, is joined by Senior Associate Tom Collins and dispute resolution partner Catherine Penny to discuss drafting patent licence agreements in preparation for dispute. Looking at the key provisions that are needed in an agreement to properly address potential disputes, they explain the different types of provisions and the nuances involved, discussing topics including governing law, jurisdiction, dispute resolution mechanisms and enforcement.

The episode includes:

• The meaning and impact of governing law and jurisdiction clauses, and the implications of a non-exclusive jurisdiction clause
• What makes a good governing law choice for an international patent licence
• Key differences between arbitration and litigation, and the advantages arbitration can bring in this type of dispute
• Alternative dispute resolution and tiered dispute resolution mechanisms

Meeting Room 7 - The patent licensing podcast - Termination

Episode 4 of our patent licensing podcast from Meeting Room 7 focuses on termination. Charlotte Tillett, head of Stevens & Bolton’s life sciences group, is joined by Senior Associate Tom Collins and Associate Joanna Adcock to discuss what needs to be considered - by both the licensor and licensee - should an agreement need to be terminated, and how to prepare for such circumstances should they arise. The episode includes:

• The point at which parties would normally expect a license to end
• What rights parties have to terminate an agreement including material breach, failure to remedy and insolvency events
• Other issues that might impact termination including change of control and validity claims
• The practical points that arise upon termination and how parties might deal with these

Meeting Room 7 – Patent licensing – Payment terms and common pitfalls

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’

Meeting Room 7 – Patent licensing – Maintaining control

In this second episode, “Maintaining control,” Charlotte Tillett, Tom Lingard and Tom Collins 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).

Meeting Room 7 – Patent licensing – Defining the deal

Welcome to Meeting Room 7, a new podcast from Stevens & Bolton.

In this series Charlotte Tillett, Tom Lingard and Tom Collins 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.