Topic Day on Complex Licensing Clauses



November 14, 2018

Location: NH Hotel Den Haag, Prinses Margrietplantsoen 100, 2595 BR The Hague (NL)





On Wednesday 14 November 2018 a Full Topic Day on Complex Licensing Clauses was held as an add-on to the LES Benelux Licensing Course.

This topic day was open to participants of the course, members and non-members.

Topics that have been discussed:

  1. New Trade Secret Protection in Europe by Wouter Pors, Bird & Bird, The Hague (N
  2. The Innovation Matrix, three moves to design your winning innovation and IP strategy by Mirjam Ros and Deepika Jeyakodi, Airbus Defence and Space, Leiden (NL)
  3. Indemnification, Liability and Insurance by  Kevin Nachtrab, Johnson & Johnson, Brussels (BE)
  4. Competition Law and Pricing by Paul Lugard, Baker Botts, Brussels (BE)
  5. Mediation in IP matters by Leandro Toscano, Business Development Unit, WIPO Arbitration and Mediation Center (CH)


NH Hotel Den Haag, Prinses Margrietplantsoen 100, 2595 BR The Hague (NL)


The number of educational points is 6.  A certificate of attendance will be send by email after the meeting if the necessary lists of attendance have been signed.


Click here for information on membership of LES Benelux or send an email to


This event is sponsored by Bird & Bird, The Hague



09.00 – 09.30 Registration and welcome coffee
09.30 – 09.40 Welcome and introduction, Guillemette Vital Durand
09.40 – 10.55 New Trade Secret Protection in Europe, Wouter Pors, Bird & Bird, The Hague (NL)
  • The new EU Trade Secrets Directive
  • Basic concepts of trade secrets protection
  • Conditions for trade secret infringements
  • Mandatory exceptions
  • Enforcement and court proceedings
  • What do companies need to do to protect their trade secrets?
10.55 – 11.25 Coffee / tea break
11.25 – 12.40 The Innovation Matrix, three moves to design your winning innovation and IP strategy, Mirjam Ros and Deepika Jeyakodi, Airbus Defence and Space, Leiden (NL)
  • Organizations today, innovate to survive. They co-create with others outside their own organization to succeed. But to capture the value of these bright ideas individually is often very complicated.
  • The Innovation Matrix simplifies and structures innovation management.
  • Start looking at innovation and IP from a pragmatic perspective. We will take you through three key steps THINK-STRATEGIZE-ACT to build an innovation and IP strategy.
  • You will learn to use IP, which is at the core of every innovation, as a tool to define your strategy and manage the innovation process.

We will put theory into practice with many examples, the use of legal design thinking and a case study.

12.40 – 13.45 Lunch
13.45 – 15.00 Indemnification, Liability and Insurance, Kevin Nachtrab, Johnson & Johnson, Brussels (BE)

A review and Discussion of standard clauses in Research Collaboration and License Agreements concerning:

  • Indemnification
  • Limitations on Indemnifications
  • (Limitation of) Liability & Damages
  • Loss Mitigation
  • Insurance
15.00 – 15.30 Coffee / tea break
15.30 – 16.45 Competition Law – Pricing, Paul Lugard, Baker Botts, Brussels (BE)
  • Competition law risks in IP licensing and distribution
  • Objectionable clauses and enforceable alternatives
  • Do’s and don’ts’ in on-and offline pricing
  • Case studies and examples
16.45– 18.00 Mediation in IP matters, Leandro Toscano, Business Development Unit, WIPO Arbitration and Mediation Center (CH)
  • What is mediation?
  • Why mediation for IP disputes?
  • Practical issues
  • Case studies and examples
  • International trends
  • WIPO model clauses
18.00 Drinks


Paul Lugard
Paul specialises in competition law, with experience in merger control proceedings, exclusionary conduct, distribution arrangements, technology licensing and matters on the intersection of intellectual property and antitrust law. As the former Global Head of Antitrust at Royal Philips Electronics, Paul managed all significant antitrust matters for the company, securing merger clearances and advising on multiple aspects of competition law. He has also designed, implemented and managed antitrust compliance programs for clients in Europe and internationally. In addition, Paul is active in the development of international competition law policy, serving as Chair of the ICC Competition Commission, as a European Commission and Dutch Competition Agency Non-Governmental Advisor (NGA) to the International Competition Network, and as Vice Chair of the Competition Committee of the Business and Industry Advisory Committee (BIAC) to the OECD.
Kevin Nachtrab
Kevin is a Senior IP Attorney for Johnson & Johnson and a member of the Expert Group of the World Intellectual Property Organization (WIPO) Center for Arbitration and Mediation. Kevin is a Past President of the Licensing Executives Society International (LESI), a former member of the Board of Governors of the Certified Licensing Professionals, Inc. and of the Board of Trustees for the African Agricultural Technology Foundation (AATF). Kevin is also an Adjunct Professor of Law at Hunan University (P.R. China), a Visiting Professor at Zhongnan University and Xiangtang University (both P.R. China), the National Taipei University of Technology (Rep of China) and the National Law University of Delhi (India), as well as an International Research Expert for the Wuhan Intellectual Property Office and the Hunan Intellectual Property Office (both P.R. China). A registered Patent Attorney and a Certified Licensing Professional (CLP), Kevin is also a member of the Bars of the State of Maryland (U.S.A.), the United States District Court for the State of Maryland, the United States Court of Appeals for the 4th Circuit, the United States Tax Court and the United States Bankruptcy Court. Based in Brussels, where he specializes in licensing and litigation in the pharmaceutical and biotech sectors, Kevin has extensive experience in practice before both the European and United States Patent Offices, as well as in technology transactional matters and litigation on an international level. Kevin is a graduate of Western Maryland University where he studied Chemistry, Biology and Political Science and the School of Law of the University of Baltimore.
Mirjam Ros
Mirjam is Director Commercial, Contracts and Legal & Human Resources at Airbus Defence and Space Netherlands. She is a strategist who believes in simplifying the complex and making ‘common sense more common’. Mirjam takes a people’s approach to her interests in Innovation & Intellectual Property, Commercial Contracting, Design Thinking, and Business Strategy & Partnering. She holds a Master of Business Law and a Master of Public Administration & Public Policy and has twenty years of experience in the aerospace, oil & gas industries and in R&D. In 2007, she wrote her thesis for Business Law on the subject of Distribution IP in Open Innovation. In 2016 Mirjam won a best paper award for ‘Strategizing Intellectual Property in Open Innovation’, at the Academic Forum of IACCM in San Diego together with her co-author Deepika Jeyakodi. Together they will publish a book in 2019, ‘the Innovation Matrix; three moves to design a winning innovation & IP strategy’ (BIS Publishers). This book expresses their personal views and does not reflect the ideas of any of the entities with which they are or have been affiliated.
Deepika Jeyakodi
Deepika is a Contracts and Bid Manager (Commercial, Contracts and Legal) at Airbus Defence and Space in the Netherlands. Previously, she was an Advocate at Spectrum Law Associates, practising at the Madras High Court, India. Earlier thereto, she was working as a Junior Advocate with law firms in Chennai. She graduated from the TNDALU, Chennai, with a B.A.,B.L (Hons) degree and a Post-Graduate Diploma in Intellectual Property Laws. She holds a Masters degree in International Law and Indian Constitutional Law from the Madras University. Further, she holds an Advanced LL.M. in Air and Space Law from Leiden University. She has to her credit, published academic writings on aviation and cyber security laws. Deepika is also the co-founder and member of a human rights based ngo ‘Cheer’, in India.
Wouter Pors
Wouter is head of the IP group of Bird & Bird in The Hague. Before studying law, he studied architecture and building construction for several years. After having done research at the Tilburg University Law Faculty from 1986 until 1989, he was admitted to the bar in 1989, specializing in IP. His main focus is on patent litigation, which allows for a blend of legal and technological innovations. He handles a wide range of patent disputes, varying from mechanical issues through software and business method patents to biotech disputes. Wouter has represented major electronics, biotech and pharmaceutical companies in international patent litigation. In addition, Wouter is also involved in quite a lot of trade mark and copyright litigation. He is also a Dutch Supreme Court litigator and has handled cases before Benelux Court of Justice.
Leandro Toscano
Leandro is the Head of the Business Development Unit of the WIPO Arbitration and Mediation Center. He holds a law degree from the University of Buenos Aires and an LL.M. in International Dispute Resolution from the University of London. Before joining WIPO in 2008, he was in private practice in intellectual property and information technology law. Leandro was the Center's representative at Maxwell Chambers in Singapore from 2011 until mid-2014.
Guillemette Vital Durand
Guillemette is a business and IP lawyer by education. Guillemette is addicted to develop legal and regulatory strategies for innovation. Since joining Danone more than 10 years ago, Guillemette had various positions centred on discovery and new products. She is based in the Netherlands currently in charge or the regulatory team dedicated to adult medical nutrition portfolio. Before joining Danone, she spent 7 years in a biotech entity (NASDAQ listed IDMI). She started her career at INSERM (Academic Institute for Health and Medical Research) technology transfer department as legal manager. Guillemette has extensive experience in licensing through her diverse positions providing legal and regulatory support from all points of view (academic / SME / multinational corporation). She developed a business sensitivity and understanding of stakeholder point of view, having interest in negotiation and Alternative Dispute Resolution (she is certified NLP Practitioner). For many years, she has been directly involved with the LESI and other professional associations finding inspiration and interest in understanding licensing trends and gaps.
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