Intellectual property agreements: law and practice (Sept 2025)

If you have queries about booking this course, please contact Lisa Penfold at UCL - lisa.penfold@ucl.ac.uk

About this course

Intellectual property (IP) agreements raise unique issues of law and practice. To draft and interpret them, it is necessary to be familiar with IP laws governing ownership rights and the different types of transaction, including assignments, licences and charges. General contract and property laws may need to be considered.

Other laws may be relevant when the IP is generated at a university, such as those concerning freedom of information, state aid, charities and tax. Many IP agreements concern products that are regulated, and the agreement may need to take account of those regulations. Other laws relating to public policy may be relevant, including EU and UK competition laws.

Practice in IP agreements varies between industry sectors. And yet the basic features of many IP agreements are similar.

This course will examine, in 12 one-hour sessions, a range of legal and practice issues that are relevant to different types of IP agreement. We will highlight key issues in the areas of law mentioned above, and discuss the detailed wording of IP agreements in areas such as:

• Grant clauses and definitions
• Confidentiality and publications
• Payments
• Performance obligations
• Warranties and liability
• Duration and termination
• Law and jurisdiction

By the end of the course, you should have greater confidence in your ability to draft and interpret IP agreements, and a greater understanding of the legal framework that underpins such agreements.

Course Schedule - Each session will be 1 hour from 13:00 - 14:00 GMT

Session 01 - Monday 15 September 2025
Law: The IP law framework for IP agreements
- Ownership: employees, commissioned works
- Types of transaction: assignments, licences, charges
- Implied terms

Session 02: Tuesday 16 September 2025
Practice: Ownership terms in IP agreements
- Foreground and Background IP; ownership of results
- Assignment
- Options

Session 03: Wednesday 17 September
Law: Key competition law issues affecting IP agreements
- Articles 101 and 102 TFEU; UK competition laws
- Block exemptions and Commission Guidance documents
- Red-flag clauses in licence agreements and R&D collaborations
- Drafting grant clauses in intra-EU licences

Session 4: Thursday 18 September 2025
Practice: Licence clauses
- Definitions: field, territory
- Licensing different types of IP
- Scope of licence: permitted acts, exclusivity
- Other licence qualifiers: perpetual, irrevocable, etc
- Sub-licensing
- Covenants not to sue

Session 05: Monday 22 September 2025
Law: Selected legal and policy issues affecting public bodies (including universities) that generate IP
- Charity and tax laws
- State Aid
- Freedom of information
- Need for publications

Session 06: Tuesday 23 September 2025
Practice: Confidentiality and publications
- Standard confidentiality obligations and exceptions
- Special confidentiality terms for results
- Special terms for universities and public bodies
- Publication rights

Session 07: Wednesday 24 September 2025
Practice: Payment terms
- Upfront and milestone payments
- Royalties and minimum royalties
- Net Sales and Net Receipts definitions
- Royalty stacking
- Combination products
- Payment reduction clauses (e.g. most favoured licensee)

Session 08: Thursday 25 September 2025
Practice: Diligence obligations
- Milestone activities and “best endeavours” type obligations
- Development plans and reports
- Disputes over diligence, including use of ADR
- Consequences of non-diligence

Session 09: Monday 6th October 2025
Law and Practice: Risk allocation clauses
- IP warranties
- Capping and excluding liability
- Different kinds of indemnity
- Entire agreement clauses
- Insurance

Session 10: Thursday 9 October 2025
Practice: Other selected clauses in IP agreements
- Work obligations in R&D agreements
- Quality control, audit and goodwill clauses in TM agreements
- Managing infringement disputes re licensed IP
- Waivers of moral rights in copyright-related agreements

Session 11: Friday 10 October 2025
Law and Practice: Termination
- Expiry, and termination for convenience
- Termination for breach or insolvency
- Consequences of termination, including purchase of improvements

Session 12: Monday 13 October 2025
Practice: Selected boilerplate clauses in IP agreements
- Assignment and change of control
- Force majeure
- Interpretation
- Law and jurisdiction

About the tutor

The course has been designed, and will be run, by Mark Anderson. He has run versions of this course since the 1990s. His credentials are:

Solicitor: He is a practising solicitor, who is recommended in Chambers Directory for both life science transactions and IP. He is recommended in the international guide, IAM Patent 1000, as a leading UK lawyer in the field of IP licensing. His blog on IP contracts, IP Draughts, was made a member of the Blawg100 by the American Bar Association in 2012. He is a Certified Licensing Professional (a qualification established by the Licensing Executives Society (US and Canada)) and a Registered Technology Transfer Professional. Trainer: He has run CPD courses on IP and contract subjects since the 1990s. He is a visiting lecturer at the UCL Faculty of Laws, and is the course director of a 5-day course, Intellectual Property Transactions: Law and Practice, which is run by UCL’s Institute of Brand and Innovation Law. This course has won two awards: (1) a Law Society Excellence Award (Highly Commended) in the Learning and Development category, and (2) a UCL Provost’s Teaching Award. Author: He is the author or co-author of 7 practitioner texts on IP and contract drafting subjects, published by OUP, LexisNexis, Bloomsbury and Law Society Publishing. These include:

Drafter: He and his colleagues have drafted hundreds of precedents for commercial contracts, including IP contracts, which have been published by OUP, LexisNexis and others. Technology Transfer (3rd edn, Bloomsbury, 2010). ‘All practitioners who deal with technology transfer arrangements in England and Wales should own a copy of this work.’ (Journal of E-commerce, Technology and Communications) Drafting and Negotiating Commercial Contracts (3nd edn, Bloomsbury, 2010). ‘It is one of the best, if not the best, texts on the principles of commercial drafting… The material is extremely well written and accessible.’ (Student Law Journal). Execution of Documents (2nd edn, Law Society, 2008). ‘This is, for a highly technical law book, a riveting read. Keep it on your shelves and you’ll be confident that you will have the answer to most issues about how to make a legal document work.’ (New Law Journal) A-Z Guide to Boilerplate and Commercial Clauses (3nd edn, Bloomsbury, 2010). ‘An extremely useful reference work, the book will be of great benefit to in-house counsel drafting commercial contracts’ (the In-House Lawyer). ‘[The book] is very useful and I hope that it will reach a wider audience.’ (His Honour Humphrey Lloyd QC, The International Construction Law Review).

Delivery and recordings

This course will be held using Zoom. You will be sent the zoom meeting details 48 hours before the start of each session, with reminders on the day of the session.

Each session will be recorded so that if you miss a session you will have 30 days to catch up.