Drafting IP Acquisition and Transfer Contracts Clinic within the context of the Cyprus IP Box Regime

To be announced

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Module 1: Introduction to IP Acquisition and Transfer in the Tech Sector

• Overview of intellectual property (IP) rights and their importance in tech companies, particularly start-ups.
• Key types of IP: Patents, trademarks, copyrights, and trade secrets, with relevance in tech-based businesses.
• Legal frameworks for IP transfers and acquisitions under Cypriot and EU law, focusing on regulatory compliance.
• The importance of conducting thorough IP due diligence before acquisition or transfer.
• Identifying risks in acquiring tech-based IP: Ownership issues, potential infringement, and third-party claims.
• Common pitfalls in drafting and negotiating IP transfer contracts for start-ups, and strategies to avoid them.

Module 2: Scenario Overview and Team Setup

• Introduction to a fictional case scenario involving the acquisition of key IP assets by a tech start-up.
• Explanation of IP types being transferred in the scenario: Patents, software, trademarks, and confidential information.
• Team-based assignments where participants represent either the buyer or seller of IP assets.
• Scenario variations: Full IP acquisition vs. partial licensing/transfer, and how these affect negotiations and contract terms.

Module 3: Key Terms and Initial Negotiations in IP Acquisition Contracts

• Detailed overview of critical IP transfer clauses: Assignment vs. licensing.
• Defining the scope of transferred IP: Exclusive vs. non-exclusive rights and their implications.
• Ensuring clear title to IP, with warranties and representations regarding ownership, infringement, and third-party rights.
• Drafting confidentiality and non-compete provisions to protect transferred IP.
• Key commercial terms: Purchase price, royalty structures, and milestone payments.
• Early-stage negotiation pitfalls: Unclear IP scope, undefined payment structures, and strategies to avoid them.

Module 4: Due Diligence in IP Acquisitions

• Conducting comprehensive due diligence on IP assets before acquisition: Verifying ownership, registration, and enforceability.
• Investigating potential infringements and third-party claims on patents, trademarks, and software.
• Assessing the validity of IP registrations (patents, trademarks, copyrights) and addressing potential issues.
• Understanding the impact of international IP regulations and jurisdictional issues in cross-border transactions.
• Practical exercise: Preparing a due diligence checklist for IP assets and drafting a due diligence report highlighting risks and recommendations.

Module 5: Drafting and Reviewing IP Acquisition Contracts

• Detailed review of IP transfer agreements: Assignment clauses, representations, warranties, and indemnities.
• Drafting effective assignment clauses to ensure full legal transfer of IP ownership.
• Overview of IP licensing options: Exclusive, non-exclusive, perpetual, or term-limited licenses.
• Allocating risk through indemnities and limitations of liability in IP contracts.
• Addressing joint ownership or shared IP: Drafting provisions for co-ownership and commercialization.
• Scenario-based activity: Drafting and negotiating key clauses of the IP acquisition contract, incorporating issues identified during due diligence.

Module 6: Closing and Executing IP Acquisition Contracts

• Legal formalities required for completing an IP transfer: Signing, delivery, and registration of the transferred IP.
• Regulatory filings necessary for IP transfers, including patent or trademark office notifications.
• Managing post-closing obligations: Further assurances, assistance with IP prosecution, or commercialization.
• Simulation of a closing meeting: Finalizing and executing the IP acquisition contract in teams, ensuring all legal and regulatory steps are followed.

Module 7: Integrating IP Acquisitions with the Cyprus IP Box Regime

• Overview of the Cyprus IP Box regime: Purpose, tax incentives, and strategic benefits for tech companies.
• Eligibility criteria for qualifying IP under the Cyprus IP Box regime: Patents, software copyrights, and other intellectual property.
• Understanding and applying the nexus approach within the IP Box regime for tax benefits.
• How IP acquisitions and transfers can benefit from tax reductions on income derived from qualifying IP.
• Structuring IP acquisition agreements to ensure compliance with IP Box requirements.
• Key provisions in IP acquisition agreements that affect IP Box qualification: Ownership, exclusivity, and commercialization.
• Common pitfalls to avoid in structuring IP deals for the IP Box.

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