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Propriété intellectuelle commerciale

We work with clients to protect, manage, and monetise assets

Our commercial intellectual property team advises clients on a wide range of intellectual property matters, including the drafting and negotiation of intellectual property licences and assignments, along with collaboration, agency, distribution, franchising, sponsorship, white label, and research and development agreements. We also work with clients in developing first-class commercialisation and monetisation strategies, and increasing operational efficiencies. Furthermore, we advise on competition law implications, the licensing of commercially valuable data and on technology transfer and know-how arrangements.

We work closely with our corporate practice to advise on the intellectual property aspects of M&A transactions, including due diligence on patent and trademark portfolios (including the freedom to operate), verification and transmission of title, advising on warranties and reviewing sale documentation, preparing licence and assignment documents, attending to post-settlement transfer and registration issues.

For life sciences organisations, we advise on IP licensing, research collaborations, joint ventures and disclosure agreements as well as regulatory, contractual and commercial matters generally.

Our Commercial IP Work

  • Tout
  • Afrique
  • Moyen-Orient
  • Royaume-Uni et Europe
  • Advising entrepreneur on various agreements in the veterinary sector

    Advising the client on non-disclosure agreements, collaboration agreements and licensing and distribution agreements for the commercialisation of his “brand extension” concepts for established veterinary products.  Also advising on freedom to operate around patents protecting those established products.

    United Kingdom

    Collaboration and services agreements for a biotech

    Advising our UK client on various agreements for the development and commercialisation of its technology through master services agreements with multi-national pharmaceutical companies and collaboration agreements with clinical companies outside the UK.  We also advised on and drafted agreements for the settlement of disputes arising from the collaboration agreements.

    United Kingdom

    Due diligence exercises for a mid-sized pharmaceutical company

    Conducting a series of patent due diligence exercises relating to products that our client was considering purchasing or licensing-in.  The exercises included advising on the strength of protection afforded by the patent portfolios in terms of claim coverage and ability to withstand validity challenges based on reviews of the USPTO and EPO filewrappers and, where warranted, additional prior searches.

    United Kingdom

    Funding for a biotech

    Advising our UK client on an inward investment by a Chinese company and drafting the necessary deal documentation.  The funding enabled our client to bring a new device to launch as well as expand its commercial team and further develop its in-house intellectual property.

    United Kingdom

    Investment in and commercialisation of a consumer health product

    Advising the client on an investment by a private European individual, including negotiating and drafting the subscription documentation, and also advising the client in the licensing and commercialisation of its intellectual property in the US, including structuring advice regarding its US subsidiary and retention of control rights at the holding company level.

    United Kingdom

    Patent due diligence on a university spin-out

    Conducting and advising our private equity client on a due diligence exercise on the target spin-out company (a biotech) as part of the latter's round of fundraising.  The work included assessing the target company's patent portfolio (42 families), including for relevance to commercialised products, and advising on the significance of patent disputes in which the target company was involved. 

    United Kingdom

    Restructuring of a licensing agreement

    Advising an EU-based biotech client on a contractual dispute with its licensee and on a proposal to convert the licensing arrangement into a joint venture (and the associated due diligence exercise).

    United Kingdom

    Setting up of joint venture relating to nuclear power

    Negotiating and drafting the relevant agreements (including a collaboration agreement, joint venture agreement, and head and sublicences) for the proposed JV, advising on tax aspects (including the Patent Box regime) and conducting a due diligence exercise on the 15 patent families that are to be licensed to the JV as well as various agreements relating to or potentially affecting the intended licensing regime.

    United Kingdom

    Trusted adviser to a global fashion and fragrance brand

    Trusted adviser to a global fashion and fragrance brand with over 1,000 stores worldwide, with the scope of work recently extended to include Egypt and Jordan.

    Égypte

    Licensing requirements for various digital lenders

    Advising various digital lenders on licensing requirements.

    Kenya
  • Trusted adviser to a global fashion and fragrance brand

    Trusted adviser to a global fashion and fragrance brand with over 1,000 stores worldwide, with the scope of work recently extended to include Egypt and Jordan.

    Égypte

    Licensing requirements for various digital lenders

    Advising various digital lenders on licensing requirements.

    Kenya
  • Motor racing series agreements

    Drafting, reviewing and advising on a range of agreements relating to the launch of a motor racing series, including various commercial agreements, licensing issues, sponsorship and the exploitation of the associated IP rights relating to the series.

    United Arab Emirates

    Research agreements for a non-profit organisation

    Representing a leading non-profit organisation in negotiations with local and international universities and research centres in relation to sponsored and joint research agreements.

    United Arab Emirates

    Consortium response to regulator proposals

    Preparing a collaboration agreement and various framework agreements for a consortium of companies in relation to a proposal to the Telecommunications Regulatory Authority in the UAE for a licence to broadcast mobile television in the UAE.

    United Arab Emirates

    Franchise agreements for the oil industry

    Advising an international oil company on franchise arrangements in the UAE.

    United Arab Emirates

    Media company operations advice

    Advising a leading Arab media company on production, advertising, event management, sponsorship and barter agreements.

    United Arab Emirates

    International restaurant franchise agreements

    Advising a UAE developed and owned restaurant brand on its expansion strategy and rollout internationally, including advising on its franchise agreements and protection of its IP assets.

    United Arab Emirates
  • Restructuring of a licensing agreement

    Advising an EU-based biotech client on a contractual dispute with its licensee and on a proposal to convert the licensing arrangement into a joint venture (and the associated due diligence exercise).

    United Kingdom

    Advising entrepreneur on various agreements in the veterinary sector

    Advising the client on non-disclosure agreements, collaboration agreements and licensing and distribution agreements for the commercialisation of his “brand extension” concepts for established veterinary products.  Also advising on freedom to operate around patents protecting those established products.

    United Kingdom

    Setting up of joint venture relating to nuclear power

    Negotiating and drafting the relevant agreements (including a collaboration agreement, joint venture agreement, and head and sublicences) for the proposed JV, advising on tax aspects (including the Patent Box regime) and conducting a due diligence exercise on the 15 patent families that are to be licensed to the JV as well as various agreements relating to or potentially affecting the intended licensing regime.

    United Kingdom

    Due diligence exercises for a mid-sized pharmaceutical company

    Conducting a series of patent due diligence exercises relating to products that our client was considering purchasing or licensing-in.  The exercises included advising on the strength of protection afforded by the patent portfolios in terms of claim coverage and ability to withstand validity challenges based on reviews of the USPTO and EPO filewrappers and, where warranted, additional prior searches.

    United Kingdom

    Patent due diligence on a university spin-out

    Conducting and advising our private equity client on a due diligence exercise on the target spin-out company (a biotech) as part of the latter's round of fundraising.  The work included assessing the target company's patent portfolio (42 families), including for relevance to commercialised products, and advising on the significance of patent disputes in which the target company was involved. 

    United Kingdom

    Investment in and commercialisation of a consumer health product

    Advising the client on an investment by a private European individual, including negotiating and drafting the subscription documentation, and also advising the client in the licensing and commercialisation of its intellectual property in the US, including structuring advice regarding its US subsidiary and retention of control rights at the holding company level.

    United Kingdom

    Collaboration and services agreements for a biotech

    Advising our UK client on various agreements for the development and commercialisation of its technology through master services agreements with multi-national pharmaceutical companies and collaboration agreements with clinical companies outside the UK.  We also advised on and drafted agreements for the settlement of disputes arising from the collaboration agreements.

    United Kingdom

    Funding for a biotech

    Advising our UK client on an inward investment by a Chinese company and drafting the necessary deal documentation.  The funding enabled our client to bring a new device to launch as well as expand its commercial team and further develop its in-house intellectual property.

    United Kingdom

Our Commercial IP team

Scott Bertschi
Scott Bertschi

Partner

Reece Corbett-Wilkins
Reece Corbett-Wilkins

Partner

Ralph Cox
Ralph Cox

Partner

James Holmes
James Holmes

Partner

Loukas Mistelis
Loukas Mistelis

Partner

Chris Williams
Chris Williams

Partner

Mark Williamson
Mark Williamson

Partner

Joycia Young
Joycia Young

Partner

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