Legal Skills: Contract Law: Drafting and enforcing R&D contracts

Audience

This seminar is a must-attend event for all those firms, universities and other research organisations engaged in R & D projects including:

• Heads of R & D and R &D Managers
• Contract directors, officers and managers
• Legal advisors
• Business development directors and managers

This programme will also be of benefit to lawyers and accountants in private practice.

Course Outline

Chairman's introduction

• What are R&D contracts and why enter into them?

Main categories of intellectual property and their relevance to R&D

• Why are IP rights relevant to R & D?
• The main types of IP rights:
• Registered and unregistered forms of protection
• Patents, utility models, registered designs, plant varieties, trade marks
• Unregistered designs, copyright, database right
• Confidentiality (trade secrets and know-how)
• What are their advantages and disadvantages?
• Deciding on when and how to protect, e.g. by patenting or confidentiality
• Ownership issues
• Practical tips

The structure and main terms of an R&D agreement

• The objectives of an R&D agreement
• The parties and specific issues relating to Industry-University arrangements
• Due diligence issues
• Definitions - foreground and background rights
• Respect of obligations of each party
• Funding
• Reporting
• Transfer of intellectual property
• Warranties and indemnities
• Confidentiality and publications
• Boilerplate
• Creation of intellectual property rights

Competition law

• What are the issues for R&D agreements?
• Do those issues apply to my organisation?
• How do I resolve the issues?
• Common examples considered, including: EU model contract; JVs.

Transferring IP to spinout companies

• Why go the spin-out route?
• How to deal with conflicts of interest
• What controls do you need?
• Should you appoint a director?
• Tax implications for the institution and the researcher

Enforcing for resolution of disputes in R&D agreements

• Disputes over performance
• Work quality
• IPRs
• Ownership of rights
• Specific problems with Universities
• Breach of confidence
• ADr/ expert determination
• Practical issues such as disclosure
• Forum and cross border enforcement

Workshop: Typical IP and drafting issues

• Ownership of IPR
• Licences of IPR
• Use of 3rd Party IPR
• Model Closures

Legal Skills: Contract Law: Drafting and enforcing R&D contracts / LE-CL-DE