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Webinar and Ask the Expert: Deal structuring: negotiating IP terms in development agreements

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Webinar and Ask the Expert: Deal structuring: negotiating IP terms in development agreements

Submitted by Efua Halm
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Expert Name

Meet your Expert:

Mark Wilson is a consultant in the field of technology commercialisation, with twenty-five years’ experience of developing, commercialising and licensing novel technologies in the pharmaceutical industry.

Over the last five years, he has acted as a strategic adviser or interim business development director for a number of European biotech firms, has worked as the senior industry consultant for the UK Government’s Better Health Programme, supporting bilateral government-level health system development activities in Brazil, Mexico, South Africa and SE Asia, and has provided commercialisation advice to several major European public bodies and programmes (such as European Institute of Technology - Health and the EU’s accelerator programme, Invest Horizon). He has provided strategic advice or support to technology incubators in Belgium, Portugal, Italy and the UK, and routinely coaches and mentors a number of early-stage biotech and med tech companies from across Europe.

Previously, he was a Director in GSK’s Platform Technology and Science division, seconded on a long-term basis into SR One (GSK’s wholly-owned corporate venture capital group). He was responsible for developing technology-based spin-outs and for out-licensing activity, and co-led this CEO-sponsored initiative. Mark worked for GSK in various licensing and alliance management roles for nearly twenty years and has been involved in over a hundred commercial transactions and alliances. He holds a Master's degree and a doctorate in chemical engineering from the University of Leeds, in addition to an MBA from Columbia University and London Business School.

Webinar intro:

The presentation will address how IP terms can be dealt with in a structured fashion during the negotiation of collaborative technology development agreements. Key topics that will be discussed include the management of arising IP through the use of multiple categories or “pools”, the challenges that relate to the use of joint IP, and discussion of the occasions when obtaining a licence for a specific use may be more beneficial than IP ownership. When two parties are working collaboratively to develop a technology, the division of arising IP can often be a contentious topic: this session will provide some approaches and frameworks for working through these discussions in a logical and principled fashion, protecting the interests of the organisation, while seeking a productive outcome.