IP Licensing: Your 3 Critical Requirements

Creating new commercial opportunities in intellectual property requires a well-drafted licensing agreement which protects your client’s interest. This panel of experts will guide you through the most essential considerations that will reduce the legal risks and ensure the rights and obligations are maintained or transferred in the intellectual property, in the best manner. This seminar is a must attend for all intellectual property lawyers, commercial lawyers and in-house counsel.

Monday, 1 July 2024
Description

Attend and earn 1.5 CPD hours

* This interactive online recording includes questions and quizzes requiring critical thinking about the topics, so you have no annual limits to the number of points/hours you can claim with this format of learning. Please verify with your CPD rules

*Original Content was created in 2022 

Chair

Hayley Tarr, Principal, Tarr Law; Lawyers Weekly Women in Law Awards 2021 Finalist

Valuing and Structuring Your IP to Maximise Business Value
  • Identifying and quantifying all enterprise intangible assets
  • Structuring IP: commercial and tax considerations
  • IP royalty determination and valuation
  • Gaining a voice for IP in transactions, strategy and risk management

Presented by Tim Heberden CA, Partner IP Advisory and M&A Valuations, Deloitte; Registered Business Valuer

Practical Insights on Drafting and Negotiating IP Licenses
  • How to design the licence scope: including by getting the right instructions
  • Negotiation and drafting tips for licensors and licensees
  • A checklist for clearly licensing IP

Presented by Rebecca Slater, Special Counsel, King & Wood Mallesons; Recommended Intellectual Property Lawyer, Doyle’s Guide 2022 and Karen Litherland, Senior Associate, King & Wood Mallesons; Intellectual Property & TMT Rising Star, Doyle’s Guide 2021

Exploring IP Licensing for Your Clients Including Implied Licenses, Tips and Traps
  • Recap and refresher on IP in your business: what’s protected and types of IP licences, common kinds of contracts involving IP
  • Assignments and licensing of IP rights
  • Implied IP licences including scope of implied licence and practical tips  
  • Navigating joint ownership
  • Lessons from the cases

Presented by Alison Jones, Special Counsel, Corrs Chambers Westgarth

Presenters


Karen Litherland, Senior Associate, King & Wood Mallesons
Karen is a senior associate at King & Wood Mallesons specialising in IP commercialisation. She advises the public and private sector across a range of industries on intellectual property commercialisation, data and technology law matters, including in relation to strategy, ownership, enforcement, rebranding, and corporate transactions. Karen has advised a number of high profile organisations on complex strategic projects involving the commercialisation of patents, software, data, trade marks and plant breeders rights. She has also advised organisations on a number of IP ownership issues, including spin off arrangements and disputes.


Rebecca Slater, Special Counsel, King & Wood Mallesons
Rebecca Slater is a special counsel in the M&A team in Brisbane and specialises in commercial legal matters with a focus on intellectual property, technology and data protection. She works for clients across a range of industries, including technology, education, energy and infrastructure, hospitality, retail and banking. She has expertise in alternative dispute resolution. Rebecca has a Master of Laws degree from Harvard Law School, as well as a degree in journalism. She is a trained mediator and has lectured at the University of Queensland on intellectual property, technology and privacy related matters. Rebecca is recognised as a Recommended Intellectual Property Lawyer, Queensland, Doyle’s Guide 2022.


Hayley Tarr, Principal, Tarr Law
Hayley has a Bachelor of Science majoring in genetics, a Bachelor of laws with first class honours, and a Masters of Industrial Property Law. She is admitted as a patent and trade marks attorney, a solicitor in the state of Queensland, and an attorney in the state of New York, USA. Having worked for top tier firms such as Allens and Minter Ellison, and taught at Bond University, Hayley founded Tarr Law in January 2020. Tarr Law is a boutique intellectual property law firm, able to assist clients in all intellectual property matters including: trade marks, copyright, designs, domain names, patents, and IP disputes. In addition to running Tarr Law, Hayley dedicates a great deal of time as a volunteer mediator for Bayside Community Legal Centre. Hayley is also a mentor for the Gold Coast Innovation Hub, and is a Lawyers Weekly Australian Law Awards 2023 Finalist. In other community engagement initiatives, Hayley participated in the St Vinnies CEO Sleepout to raise money for the homeless in June 2022 and will be a speaker and chair at Legalwise Seminars in October and November 2022. Everything Hayley does is for the sake of her two beautiful daughters. When she is not in the office, you’ll find her seeking out new and adventurous experiences with her girls. Please do not hesitate to reach out. Hayley would love to assist you with your intellectual property needs.


Tim Heberden CA, Partner IP Advisory and M&A Valuations, Deloitte
Tim is a specialist in intellectual property valuation, royalty determination and the monetisation of technology, data and brands. He is named in the IAM Strategy 300 – the World’s Leading IP Strategists. Tim is technical author of the ‘Guidance Note on the Valuation of Intellectual Property’ (issued by RICS), and is the author of a chapter on IP royalties for ‘International Licensing & Technology Transfer’. Having specialised in IP economics for twenty years, Tim is able to integrate the economic, functional and legal characteristics of IP assets into robust valuations and royalty opinions. His team use a range of value-based metrics to provide insights that unlock hidden IP value, and mitigate the risk associated with technology data and brands. Tim is a CA, MBA, Registered Business Valuer and Fellow of the Royal Institution of Chartered Surveyors, a Fellow of the Australian Marketing Institute and a Certified Practicing Marketer.


Alison Jones, Special Counsel, Corrs Chambers Westgarth
Alison is a Special Counsel at Corrs Chambers Westgarth, Australia’s leading independent law firm and practises in IP, competition and consumer law, entertainment law and related areas. Alison has expertise across a broad range of areas, including IP protection and enforcement, commercialisation (including licensing, distribution and sponsorship), advertising collateral, complaints and disputes, industry ethics, competition and consumer law, anti-bribery, anti-counterfeiting, confidential information, cross-border transactions, contract drafting and due diligence. She advises various leading companies on a range of regulatory issues including food law, cosmetics, life sciences and therapeutic goods regulation, trade, customs, administrative action, investigations, product liability and recalls, privacy and data protection. Alison has undertaken various client secondments in global companies at General Counsel level including a US headquartered pharmaceutical and life sciences company, a leading multinational FMCG company and a major global interactive marketing services company.

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IP Licensing: Your 3 Critical Requirements

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DELIVERY MODE BELOW

Single Session
CPD Hours 1.5
$190.00
$133.00
On Demand 20241017 20240701

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