Drafting Patent and Know-How Licencing Agreements

This book provides a focused and detailed discussion of one specific type of intellectual property (IP) transaction: the patent and know-how licence agreement. It analyses and explains the legal and practical issues that arise when drafting, negotiating, and advising on this kind of agreement. The work discusses issues of law and practice relevant to international IP licensing, including how IP laws, general property laws and contract laws together affect the drafting and interpretation of licence agreements. It also evaluates the role of other areas of law, such as data protection and privacy, competition law, insolvency, and sale-of-goods law. The first part of the book provides an overview of patent and know-how licence agreements, including international business practice and trends, valuation of technology and financial terms, key elements of licence agreements, and how they differ from other IP transactions. Later chapters examine in detail the terms commonly found in patent and know-how licence agreements, and each chapter includes samples of wording to illustrate the points under discussion. The work focuses on English and European Union-wide law, considering selected differences between English law and the law in other jurisdictions, such as the United States, to illustrate the different approaches the court may take on particular issues. Drafting Patent and Know-how Licence Agreements is an authoritative and practical guide to this area of law, providing detailed coverage of points that the legal practitioner should consider when drafting this kind of agreement.

1 - General legal issues affecting international IP transactions
2 - IP laws affecting transactions
3 - Commercial law and practice affecting PKHLAs
4 - Other selected areas of law affecting PKHLAs
5 - Overview of patent and know-how licence agreements (PKHLAs)
6 - Parties
7 - Recitals
8 - Definitions and IP Schedules
9 - Grant clause
10 - Information and services provisions
11 - Payments and payment terms
12 - Commercialisation obligations
13 - Patent protection and dealing with infringements
14 - Warranties, liability and indemnities
15 - Duration, termination and consequences of termination
16 - Law and jurisdiction
17 - Boilerplate clauses
18 - Signature blocks and methods of signature

Mark Anderson is a solicitor in private practice and a visiting lecturer at University College London. He has over 30 years' experience of advising on intellectual property and commercial transactions. He is a member of the Law Society's Intellectual Property Working Party and led the IPWP's submissions to the European Commission on the 2014 Technology Transfer Block Exemption Regulation.