Faculty of Law, University of Hong Kong

Intensive Evening Course on

Management and Commercialisation of Intellectual Property

This course is open to all professionals and students who are interested in intellectual property.

10-21 June, 2013
Venue: HKU Centennial Campus

Course Teachers

David Llewelyn is Honorary Professor at HKU, Professor & Deputy Dean of the School of Law at Singapore Management University and Professor of Intellectual Property Law at King's College London.  Professor Llewelyn is a co-author of Kerly's Law of Trade Marks and Trade Names (15th ed. 2011) and joint author of Cornish, Llewelyn & Aplin on Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (8th ed. 2013).  Resident in Singapore, he is a door tenant of IP chambers 8 New Square in London and is involved in international arbitration work.  His business book Invisible Gold in Asia: Creating Wealth through Intellectual Property was published in 2010 by Marshall Cavendish.

Annie Tsoi is a partner of Deacons and the Head of China IP practice. Annie has 20 years experience in advising on all aspects of intellectual property work and on the unique challenges arising from doing business in China. Annie is acknowledged as a Leading Lawyer in the area of Intellectual Property by the Chambers Global, in the area of Trade Marks by the International Who’s Who of Trademark Lawyers. She has recently been awarded the 2012 One Hundred Outstanding Female Entrepreneurs in China.

Haochen Sun is Assistant Professor of Law and Deputy Director of the Law and Technology Centre at the University of Hong Kong. He specializes in intellectual property protection of luxury brands. His edited volume The Luxury Economy and Intellectual Property will be published in 2014 by Oxford University Press.

 

Part One: The Commercialisation of IP

Date, Time & Venue

Teacher*

Topics

Monday, 10 June
(6:30-9:30pm)
TBC, HKU campus

DL

Introduction to IP law: Patents, Trade Marks, Copyright, Designs, Plant Varieties, Confidential Information. International aspects. Employee/commissioned works. Dealings generally - assignments, different types of licences (sole and exclusive, oral and written, express and implied). Termination.

Tuesday, 11 June
(6:30-10:00pm)
TBC, HKU campus

DL

Dealings in Patents: Licences and assignments. Agreements to assign. Oral and written licences/assignments. Defining rights. Compulsory licensing. International aspects - TRIPS & Doha Declaration. Right to sue. Licences of rights. Registration of assignments/licences. Assignee/Licensee estoppel.
Patent Pooling. Standard Setting: Patent ambushes and FRAND. Employees’ statutory compensation rights.
Dealings in Know How and Trade Secrets: Nature of the rights, express and implied creation of rights, relative secrecy, licences and assignments. Oral and written licences/assignments. Defining rights. Right to sue. Employees’ rights. Restrictions on employees during and post employment. Unreasonable restraint of trade. Whistleblowing

Thursday, 13 June
(6:30-10:00pm)
TBC, HKU campus

DL

Dealings in Copyrights: Licensing, franchising, merchandising, photos, architects, films. Categories of industry set out in Copinger.

Dealings in Trade Marks: Difference between registered and unregistered rights. Registered users. Quality Control. Trusts. Franchising. Merchandising. Right to sue.

Dealings in Registered and Unregistered Designs

Friday, 14 June
(6:30-9:30pm)
TBC, HKU campus

 

DL

Dealings in Plant Varieties

IT/IS: Structure of the industry and contractual relations. Software licensing, shrink wrap, dealing with software. Outsourcing and IP.

Saturday, 15 June
(9:30-12:30pm)
TBC, HKU campus

DL

IP Due Diligence in M&A Transactions: the different types of corporate transaction, incl. share purchase versus business purchase. NDAs; checking ownership of IPRs; registered versus unregistered rights; international aspects. Reviewing licence agreements, both in- and out-, and other commercial agreements with IP provisions; checking consequences of corporate transaction on validity. Drafting the disclosure letter and negotiating the warranties and indemnities. The financing aspects: recording assignments and taking security, international aspects.

Monday, 17 June
(6:30-9:30pm)
TBC, HKU campus

DL

Antitrust and IP Dealings: UK and EU; EU free movement issues.

Tuesday, 18 June
(6:30-9:30pm)
TBC, HKU campus

DL

Protecting Value: Enforcing rights, litigation (interlocutory, full trial, Anton Piller and Mareva), damages and accounts of profits, arbitration (choice of law, choice of forum, enforcement of awards, arbitrable disputes), mediation, ICANN. Settlement agreements.

 

Part Two: IP Management and Commercialisation in China

Wednesday, 19 June
(6:30-9:30pm)
TBC, HKU campus

SHC

Luxury Brands and Trademark Law: Major issues about trademark protection of luxury brands including the recognition of well-known trademark, likelihood of confusion, and anti-dilution protection.

Thursday, 20 June
(6:30-9:30pm)
TBC, HKU campus

AT

IP Management in China:

  • IP legislative and enforcement framework.
  • Portfolio management of IPRs including IP audit and due diligence
  • IP issues in merger and acquisitions, franchising and licensing, R&D and technology transfer

Friday, 21 June
(6:30-9:30pm)
TBC, HKU campus

AT

Commercialisation of IPRs in China: The trend, models, problems and solutions in various industries. Cross border transactions involving IP.

* DL – Prof David Llewelyn   * AT – Ms Annie Tsoi  * SHC – Mr Haochen Sun

Award: Certificates will be issued to participants with two options: (1) a certificate of attendance (without any formal assessment) or (2) a certificate of completion (requiring successful completion of formal course assessment).

Those who attend and successfully complete a course (ie. by completing the required assessment for a certificate of completion) and who subsequently apply and are admitted to an LLM programme at HKU will be exempted from 1 of the 8 required units (up to a maximum of 2 units of exemption is permissible under HKU regulations). Please note that the University Composition fee applies to all LLM applicants. There is no reduction of tuition fees.

Application and Fee: HK$5,000 for participants who would like to obtain a certificate of attendance or who do not need CPD points; OR HK$10,000 for participants who would like to obtain a certificate of completion or who would like to apply for CPD points.

Form of Assessment: In-hall examination (date to be determined).

Law Society CPD Points: Practitioners may claim up to 15 Law Society CPD points.

Application :
Please complete the application form and arrange for a cheque with an appropriate amount to be made payable to “The University of Hong Kong” and mail to Miss Elaine Ho, Faculty of Law, 10/F Cheng Yu Tung Tower, Centennial Campus, the University of Hong Kong, Pokfulam Road, Hong Kong.

For enquiries, please contact Miss Elaine Ho (Phone: 3917-4727 / Fax: 2549-8495 / Email: eho17@hku.hk).