Tuesday 17th September 2013
Duration: 2 hours
One of the best ways of generating revenue from your IP can be through licensing. But licensing your IP to a third party can often be a difficult path to navigate. Successful commercialisation of IP requires considered IP strategies as well as careful contract drafting. This presentation will examine:
- Choosing the right licence:
- exclusive licence
- sole licence
- non-exclusive licence
- The use of geographic restrictions and field restrictions
- Performance requirements of the licensee
- Royalties and payments (including upfront licence fees versus ongoing royalties)
- Ownership of improvements to technology (eg does the licensee assign the developed IP to the licensor?)
- Termination rights and trade out periods
- Problem clauses in IP licences
- Tax implications
- Case studies
This webinar is suitable for: lawyers advising businesses on IP issues, IP lawyers, in-house counsel – all States
PRESENTED BY: Rob McInnes, Partner, DibbsBarker, Sydney
Rob is a Partner in the Intellectual Property & Technology Services Group, and a member of the National Medical & Pharmaceutical and Energy, Resources & Infrastructure Industry Groups of DibbsBarker.
Rob advises established businesses, start-ups, research organisations, and investors in matters relating to the commercialisation of novel technologies, and in the intellectual property-related aspects of major projects and transactions. He is a specialist in the structuring and negotiation of patent licences, collaborative research agreements, and other contracts for the development and commercialisation of innovations.
In addition to his experience as a lawyer in private practice, he has served as the in-house manager of IP and technology transfer in a multinational corporation. In this role he gained valuable experience in the development of IP portfolios that are comprehensive, cost-effective, and integrated with a company’s business strategy.
Rob is currently ranked by Intellectual Asset Management magazine in IAM Patent 1000: The World's Leading Patent Practitioners, as a highly recommended licensing lawyer in Australia, and has also been named in the 2013 edition of IAM Strategy 300: The World's Leading IP Strategists. He is also one of only six private practice lawyers in Australia to have met the requirements for the US-based Certified Licensing Professional qualification.