Int'l Technology Licensing Agreements (Meets May 26-June 18) (LAW-736-001)
Erauw
Meets: 02:30 PM - 05:30 PM (TWTH) - Room 500
Enrolled: 18 / Limit: 20
Notices
Meets May 26-June 18
Description
This course has the ambition to go to the core of transactions granting the right to use intellectual property rights and their assignment. Prerequisite knowledge of what the IPR’s are, in general terms, is an asset. Otherwise the student will need to independently acquire such basic knowledge (which is feasible). To begin with, some (only some) of the legal aspects with regard to international agreements in general will be highlighted: validity as to formal and substantial requirements, capacity to contract, applicable law in general, remedies and contractual liability versus tort liability, field of application, the role of mandatory rules in international contracts.
But the contractual relationships regarding the exploitation or the transfer of intellectual property rights are the object of the course. Examples of brand-licensing and of authors’ copyright agreements will be given. The main focus will however be a detailed analysis of the transfer of technology in patent licensing agreements and assignments of patents. The law applicable to licensing agreements and to transfer of property in different approaches in several legal systems will be discussed. The problems of jurisdiction, arbitration and dispute settlement in general must be briefly called upon, in order to give the context in which the legal issues rise. This helps to anticipate the sanctioning of the agreements and the use of remedies. USA-approaches, South American, European and Asian conflicts law may be discussed briefly with that purpose. Examples of mandatory national laws in this area are to be given: protection of weaker parties, anti-trust and its exceptions for patent-licensing, public procurement, maximum royalties… At this stage, less than one class will be devoted to the question of the national law applicable to the intellectual property rights (in rem).
A substantial part of the course shall be:
- The comparison between licensing agreements and agency, distribution and franchise agreements.
- The analysis of several standard types of agreements that are helpful in the context of licensing: secrecy agreement, letters of intent, R&D-agreements, standstill, option agreement, material transfer, combined agreements, procurement et al.
- Follows a detailed study of the actual licensing agreement: its structure and several clauses for drafting: party identification, definitions, grant-clause, payment, warranties & representations, termination, jurisdiction et al.
The course gives ample attention to problems of strategy, valuation and negotiation. The last two classes are built around a negotiation exercise of agreement terms on several issues, based on a case constructed by Johan Erauw and used for training by WIPO-courses.
A more detailed class description will be posted on Blackboard – with an indication of the reading materials. As book for the course we will have a photocopied 120-page document made for WIPO and WTO/International Trade Centre regarding the negotiation and drafting of licensing-agreements. Other reading materials will be legislative provisions or law-review-articles given as handouts in class or posted on Blackboard. PP-slides are to be used in the classes and will be posted.
Textbooks and Other Materials
The textbook information on this page was provided by the instructor. Students should use this information when considering purchases from the AU Campus Store or other vendors. Students may check to determine if books are currently available for purchase online.
First Class Readings
Not available at this time.
Syllabus
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Microsoft Word (DOC)