overview
Practical, Commercial, and with a focus on the ASEAN market, this course will take participants through key aspects of deal sourcing, structuring, and contracting, that ensure win – win outcomes for all parties in the transaction.
Using case studies, our expert course faculty will highlight risk management strategies, typical problem and dispute areas, and the right fix. It is recommended that both business development / licensing executives and legal managers from firms attend to maximise value.
Learning outcomes
- Licensing deal structures and components – a customised approach
- Win-win negotiation strategies for all parties
- Deal valuation and modeling based on projecting commercial returns
- IP Contract structures applicable for the ASEAN market
- Documentation practicalities
- Key issues in cross border licensing
- Post deal management
- When the deal goes awry – exit strategies and legal matters
Who should attend
Licensing, Business Development, R&D, Commercial and Strategic planning executives from Pharma, Biotech, Government, CMOs, CDMOs and Investors / Financiers in the industry. Specific job functions including but not limited to:
- Head of Business Development and Licensing
- Corporate Development and In Licensing Manager
- Director Global Business Development and Strategy
- Strategy Planning
- Commercial Managers / Directors
- Chief Scientific Officer
- Heads / Managers of R&D
- CEOs and Heads of Investment
- In house counsel / legal managers
pricing
Trainers
James Kinnaird
Partner
Marks & Clerk (Singapore)
James has particular expertise in assisting clients with the drafting and prosecution of applications in the pharmaceutical, chemical, food, life sciences and materials fields. He has managed and implemented strategies for protecting the inventions of pharmaceutical companies worldwide and spent a year advising a proposed, new business unit of AstraZeneca on its Freedom to Operate across multiple jurisdictions and products.
He is also heavily involved in helping pharmaceutical companies conduct due diligence in respect of patent portfolios that they are interested in acquiring or licensing. Recent examples of this include two licencing deals conducted by AUM Biosciences.
Areas of Expertise
- Due diligence on patent portfolios before acquisition/licencing (buyer or seller)
- Freedom to Operate
- Product launch risk identification/de-risking
- Litigation Support
- Intellectual property clause review in agreements and liaison with lawyers
- Drafting, filing and prosecuting patent applications worldwide for pharmaceutical companies, ranging from large (Pfizer, AstraZeneca, BMS), medium (e.g. Orexo, Heptares Therapeutics) to small (e.g. AUM Biosciences, Betagenon)
James has a (BSc(Hons) Chemistry with Medicinal Chemistry from Glasgow University, PhD from Cambridge University). He initially followed the usual path for chemists with his background and spent time in the US doing postdoctoral work at Columbia University and as a medicinal chemist at Pfizer in Sandwich (UK), before switching track to become a patent attorney in 2005. He is now a Registered Singapore Patent attorney (2014), Chartered Patent Attorney (UK, 2009) and he was also a European Patent Attorney (qualified 2009) before his move to Singapore in 2013.
Guest Speaker
Wendy
Head – IP Practice
Eldan Law
Wendy is the co-head of the IP practice of Eldan Law LLP, with a specialist focus in IP and technology related advisory and dispute. Between 2008 – 2017, she was a partner with the IP team of Rajah & Tann. She had been profiled as one of the “50 IP Litigators You Should Know” in the Asia Pacific region (Asia IP, September 2013) and had been consistently awarded the IP Star by Managing IP in 2014, 2015, 2016 and 2017.
Agenda
Pharma / Biotech Licensing – evolution and current touch points
- Licensing as a source of new pipelines
- Early and late stage drug development M&As and licensing needs
- Tech driven licenses
- Drug distribution licensing
The in / out licensing deal market in ASEAN
- Trends and opportunities
- Typical deal structures
- Scope for innovation
The In / Out licensing process
- Deal making components and structures
- Territory, Loans, Field of use, upfront payments, royalty rates, development cost sharing, profit sharing, sales based milestones, co promotion rights, lead party
- Strategy
- The negotiation process
- Contractual issues
- Termination rights
Valuation of licensing deals
- Key factors
- Criteria
- Modeling the deal
Exercise: Using a spreadsheet, participants will model the optimal deal structure for a pharmaceutical compound to be licensed for commercialisation, followed by valuation
Structuring Biotech / Pharma IP Contracts
- Formation of contracts
- Validity of contracts
- Structure of a contract
- Commercial considerations
- Protecting IP – Patents, Trade marks, Passing off, Trade secrets/confidential information
IP Licenses
- Form of IP Licence
- Difference from assignment
- Scope of use
- Background IP
- Dealing with foreground IP
- Concerns of the IP Rights Owner/Licensor
- Royalties/licence fees
- Infringement
- Wrongful use
- Reputational damage
- Sub-licensing
- Reverse-engineering
- Competition
- Breach and termination
Exercise: Licensing agreements for immune checkpoint inhibitors
Concerns of the IP rights user / licensee
- Royalties/licence fees
- Duration
- Validity and geographic coverage
- Extent of usage
- Ownership of new developments
- Licence fees
- Infringement of third party IP rights
- Breach and termination
Negotiating a balanced license
- Establishing intended outcomes
- Relative bargaining positions
- Identifying points of conflict and points of agreement
- Win-win vs positional negotiation
- Seven strategies of effective negotiations
- Specific issues relating to negotiating an IP licence
Documentation
- Term Sheets
- Confidential Prospectus
- Non confidential brochure
Considerations for cross border licensing
- Choice of jurisdiction
- Selecting governing law
- The dispute resolution process
Post Deal Management
- Project Management
- Alliance Management
- Patent infringement and arbitrations
- Licensing agreement disputes
when & where
16 - 17 Mar 2020
Mandarin Orchard Singapore, by Meritus
333 Orchard Road, Singapore 238867
Tel: +65 6831 6062 | Fax: +65 6737 3130
Mobile No.: +65 8298 9442
Contact Person: Tan Ai Li
Email: aili.tan@meritushotels.com
Website: www.meritushotels.com
On-site & in-house training
Deliver this course how you want, where you want, when you want – and save up to 40%! 8+ employees seeking training on the same topic?
Talk to us about an on-site/in-house & customised solution.