Simon Portman

Solicitor, Marks & Clerk

Simon specialises as a commercial contract lawyer for technology companies. He works for clients in the electronics, bioscience, defence, software, nanotech and creative industries, advising companies ranging from small start-ups to big multinationals as well as individuals, public bodies and charities. Nordic clients form a significant part of his practice, notably Finland and Norway.

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.

He heads the firm’s Extended Reality team and in that capacity supplies specialist advice and training to members of XR organisations such as Immerse UK and XR Nation.

Simon has been recognised as a leading practitioner in Who’s Who Legal: Life Sciences 2019 and a rising star by Managing Intellectual Property, IP Stars, 2018.

Contributed to

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Intellectual property licence—pro-licensee

Precedents

This licence of intellectual property (IP) rights contains standard provisions and has been drafted in favour of the licensee. The licence is drafted on the basis that the licensed IP rights are set out in a schedule, which is sets out details of the various rights, including patents, trade marks, designs, copyright works and databases. The schedule can be amended, depending on the IP rights to be licensed, and the nature of the products in respect of which they are to be used.

Intellectual property licence—pro-licensor

Precedents

This licence of intellectual property (IP) rights contains standard provisions and has been drafted in favour of the licensor. The licence is drafted on the basis that the licensed IP rights are set out in a schedule, which is sets out details of the various rights, including patents, trade marks, designs, copyright works and databases. The schedule can be amended, depending on the IP rights to be licensed, and the nature of the products in respect of which they are to be used.

IP due diligence questionnaire

Precedents

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 contained 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

Precedents

This Precedent is an intellectual property (IP) evaluation and licence option agreement drafted from the perspective of the potential licensee. It contains provisions for the owner of IP rights to grant a potential licensee the opportunity to review those IP 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

Precedents

This Precedent is an intellectual property (IP) evaluation and licence option agreement drafted from the perspective of the potential licensor. It contains provisions for the owner of IP rights to grant a potential licensee the opportunity to review those IP 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.