Contributed by Cheah Chiew Lan, Partner, Messrs Tay & Partners, and Secretary, LES Malaysia; and photos by Md Fazli Rosman and Satha Selvan, Administrative Assistants, Bar Council
The Bar Council Intellectual Property and Professional Standards and Development Committees, and Licensing Executives Society Malaysia (“LES Malaysia”) organised a “Contractual and other Legal Issues in Licensing” seminar on 5 Nov 2012, at the Renaissance Hotel Kuala Lumpur. Five experienced speakers gave in–depth presentations on intellectual property (“IP”) licensing, and the participants, numbering more than 190, were treated to an edifying and entertaining interactive licensing game.
The first to speak was Dr Mark Horsburgh, the President of LES Australia and New Zealand, on the topic of “Prior Preparation and Planning Prevent Poor Performance”. Dr Horsburgh’s presentation focused on the importance of diligent preparation with regard to IP licensing, on the part of both the licensor and licensee. He also emphasised the importance of knowing the details regarding the licence — what, where, when, who and how — and thinking “outside the box” when negotiating an IP licensing agreement.
After a short tea break, the seminar reconvened with a talk by Wong Sai Fong, Senior Partner at MessrsShearn Delamore & Co, and member of LES Malaysia, on “Practical Considerations in IP Licensing”. His “submission”, as he called it, addressed seven aspects, namely: ownership of IP rights; the process of, and considerations in, negotiations; IP due diligence or audit; identification and avoidance of anti–competition problems; quantitative valuation of IP rights; the importance of considering other agreements that interact and interrelate with the IP licence; and the need for preliminary agreements.
Next up was Dr Jasmine Kway, Executive Vice President of Business Development for Transpacific IP, and also EXCO member of LES Singapore, who talked about developing a licensing strategy. Dr Kway’s presentation focused on the need to assess IP rights for licensing, and the valuation of IP rights. She explained the different ways of valuing IP rights, and made it clear that one should remain flexible and realistic, and should not only focus on a particular method of valuation.
After lunch, participants were treated to a licensing game by the jovial and charismatic Chew Phye Keat, Partner at Messrs Raja Darryl & Loh, and committee member of LES Malaysia. They were divided into groups of ten that were further divided into groups of five, with one side representing the licensor and the other representing the licensee. They were required to identify the various issues of dispute in a licensing agreement and negotiate an agreement. Chew Phye Keat utilised the game to illustrate relevant issues in a licensing agreement, and how detailed analysis is vital during negotiations.
The last speaker of the day was Alban Kang, Managing Partner of ATMD Bird & Bird, Singapore, who talked about contractual pitfalls. He highlighted various areas in an agreement where one should tread with caution when drafting, such as the scope of the licence, where the need to define the parameters of the licence is pivotal.
This full–day seminar was well received by the participants and ended at about 5:00 pm.