Simon Portman

Simon specialises as a commercial contract lawyer for technology companies. He works for clients in the electronics, bioscience, defence, software and nanotech industries, advising companies ranging from small start-ups to big multinationals as well as individuals, public bodies and charities.

He advises on a wide range of contracts, including licenses, R&D collaborations, manufacturing agreements and procurement documentation. On the regulatory front he has advised on compliance with clinical trials legislation and novel food applications, as well as freedom of information and data protection issues.

Simon has co-written two business textbooks, Commercial Issues for Life Science Companies and Intellectual Property: the Lifeblood of your Company and has contributed articles to numerous publications, including the Financial Times, Patent World and Managing Intellectual Property. He regularly gives seminars and workshops at pharmaceutical conferences in the UK and internationally. He was also part of a UK IPO steering group putting together policies and contracts suitable for R&D collaborations in China.

Prior to joining Marks & Clerk Solicitors in March 2009 Simon trained at a London law firm (where his training included secondment to the petrochemical industry) and subsequently worked at one of Cambridge’s leading commercial practices. Simon spearheads the Cambridge branch of Marks & Clerk Solicitors.

Contributed to

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Brexit—warranty for commercial contracts clause
Precedent

This Precedent warranty clause is for use in a business-to-business (B2B) contract. The warranting party or parties confirm that their ability to perform the contract will not be impacted by Brexit, and optional drafting is provided to cover any other country’s departure from the EU or EEA in the future.

Copyright definition
Precedent

This Precedent is a suggested definition for the term 'copyright'. This definition of copyright can be included in the definitions and interpretation clause of an agreement and may be used in conjunction with the defined term Intellectual Property Rights.

Design definition
Precedent

This Precedent is a suggested definition for the term 'design’. This definition can be included in the definitions and interpretation clause of an agreement and may be used in conjunction with the defined term Intellectual Property Rights.

Goodwill definition
Precedent

This Precedent is a suggested definition for the term 'goodwill'. This definition can be included in the definitions and interpretation clause of an agreement. It will only be appropriate to include this definition in agreements that concern goodwill as an asset.

Intellectual Property Rights (IPR) definition
Precedent

This Precedent is a suggested definition for the term ‘intellectual property rights’, a term which is commonly used in agreements. The term ‘intellectual property rights’ can encompass a large number of rights so including a definition in agreements that involve intellectual property, whether as the main object or as an ancillary consideration, provides clarity regarding the rights covered. This definition is often used in conjunction with the defined terms ‘know-how’ and ‘confidential information’. It may also be necessary to define individual intellectual property rights separately either instead of or in addition to providing a general definition of ‘intellectual property rights’.

Intellectual Property Rights (IPR) Schedule
Precedent

This Precedent Intellectual Property Rights Schedule will generally be used in conjunction with a definition for Intellectual Property Rights. When intellectual property rights or individual intellectual property rights are defined, it is sometimes beneficial to exhaustively or non-exhaustively set out the intellectual property rights concerned in an Intellectual Property Rights Schedule.

IP due diligence questionnaire
Precedent

This Precedent is a form of IP due diligence questionnaire. It sets out example questions which a buyer may wish to ask a seller about the IP that is owned and/or used by the target company or business. These questions would typically be set out as a separate paragraph within a broader legal due diligence questionnaire relating to a share or asset purchase. Legal due diligence questionnaires are prepared by the buyer and its advisers and sent to the seller (or its advisers) so as to initiate the due diligence process, by which the buyer investigates the target company or business and identifies any potential areas of concern prior to entering into the purchase agreement.

IP evaluation and option agreement—pro-licensee
Precedent

This Precedent is an IP evaluation and licence option agreement drafted from the perspective of the potential licensee. It contains provisions for the owner of intellectual property rights to grant a potential licensee the opportunity to review those intellectual property rights, including any patents and related know-how (defined as ‘Technology IP’ in the Precedent) so that the potential licensee can decide whether to commence formal licence negotiations under the option provisions. If negotiations commence, the parties may or may not proceed to finalising and executing the licence. Although patents are specifically alluded to, this Precedent can be used when any type of IP is the subject of the option.

IP evaluation and option agreement—pro-licensor
Precedent

This Precedent is an IP evaluation and licence option agreement drafted from the perspective of the potential licensor. It contains provisions for the owner of intellectual property rights to grant a potential licensee the opportunity to review those intellectual property rights, including any patents and related know-how (defined as ‘Technology IP’ in the Precedent) so that the potential licensee can decide whether to commence formal licence negotiations under the option provisions. If negotiations commence, the parties may or may not proceed to finalising and executing the licence. Although patents are specifically alluded to, this Precedent can be used when any type of IP is the subject of the option.

Know-how definition
Precedent

This Precedent is a suggested definition for the term 'know-how'. This definition can be included in the definitions and interpretation clause of an agreement and is often used in conjunction with the defined term Intellectual Property Rights.

Patent definition
Precedent

This Precedent is a suggested definition for the term 'patent'. This definition of patent can be included in the definitions and interpretation clause of an agreement and may be used in conjunction with the defined term Intellectual Property Rights.

Territory definition
Precedent

This Precedent is a definition for the term ‘territory’, to be included in the definitions and interpretation clause of an agreement. It provides an option for a simple definition of territory based on listing the specific countries forming the intended territory, and an option for a definition of territory based on membership of the European Union which accommodates the potential issue of Member States exiting the European Union. One purpose of such a boilerplate clause is to allow the parties to define any terms that are used throughout an agreement, gathering them in one place for ease of reference.

Trade Mark definition
Precedent

This Precedent is a suggested definition for the term 'trade mark'. This definition of trade mark can be included in the definitions and interpretation clause of an agreement and may be used in conjunction with the defined term Intellectual Property Rights.

Trade Secret definition
Precedent

This Precedent is a suggested definition for the term ‘trade secret’. In addition to clarifying when confidential information will qualify as a trade secret it also incorporates the new definition of trade secret provided in Regulation 2 of the Trade Secrets (Enforcement etc) Regulations 2018, the Trade Secrets Regulations (which transposed the provisions of Directive 2016/943/EU, the Trade Secrets Directive, into UK law). This definition of trade secret can be included in the definitions and interpretation clause of an agreement and is usually used in conjunction with the defined term Intellectual Property Rights.

Practice areas

Membership

  • Law Society, One Nucleus, Cambridge Network

Panel

  • Specialist Panel

Education

  • Magdalen College School, Merton College, Oxford, London Guildhall University

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