How to draft a FRAND licence agreement

2017 has been a productive year for writing activities at Anderson Towers.

Articles in legal journals

Since this morning, IP Draughts’ article, How to draft a licence agreement that is fair, reasonable and non-discriminatory: a 10 point plan, has been available to subscribers on the Oxford University Press (OUP) website for the Journal of Intellectual Property Law and Practice (JIPLP). It is due to be published in the paper version of JIPLP during 2018.

The article considers the implications of the recent, English High Court case of Unwired Planet International Ltd v Huawei Technologies Co Ltd & Anor for drafters of licence agreements. It considers various aspects of this important case, including:

  • how to negotiate in a fair, reasonable and non-discriminatory (FRAND) way
  • how to draft terms that are FRAND
  • the implications of the case, not only for the licensing of standards-essential patents, but also for other types of licence agreement that must be FRAND, including licences granted pursuant to Horizon 2020 grant terms

This article follows the publication of another article by IP Draughts and his colleagues Lisa Allebone PhD and Mario Subramaniam, in JIPLP earlier this year. Contract law for IP lawyers was published in the paper version in October 2017.

In each case, when IP Draughts uploaded the articles to the JIPLP website, the computer told him sternly that articles should be no more than 5,000 words. In fact, both articles are close to 10,000 words. There’s just too much to say…

Books and legal encyclopedias

At the beginning of October, IP Draughts received the first copies of the 4th edition of A-Z Guide to Boilerplate and Commercial Clauses, which had been published by Bloomsbury Professional. Originally published by Butterworths nearly 20 years ago, the 4th edition contains 695 pages of useful information on the reasons for including boilerplate clauses, practice issues that arise, and examples of clauses.

Also recently published was the latest version of the Confidentiality title in the Encyclopedia of Forms and Precedents (LexisNexis). This is one a number of volumes of EF&P that we created some years ago and continue to update. Our other volumes include Research and Development, Patent and Know-how Licensing, and Commercial Services.

Policy submissions

Last Friday, the Law Society of England and Wales submitted to UK government ministers and officials a paper on Brexit and IP that had been written jointly by the Law Society, Chartered Institute of Patent Attorneys, Chartered Institute of Trade Mark Attorneys, IP Bar Association and IP Federation. IP Draughts was the lead author of this paper. It should be made available on the Law Society website early in the new year.

Happy reading!

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Filed under Competition law, Intellectual Property, Licensing

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