Avoiding Intellectual Property Traps in Contracts
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Gain critical insights into IP definitions, licenses, warranties, indemnification, and confidentiality clauses to protect your clients and mitigate risks effectively.
Avoiding Intellectual Property Traps in Contracts
- 1. Avoiding Intellectual Property Traps in Contracts Avoiding Intellectual Property Traps in Contracts Presented By Kirby Drake Kirby Drake
- 2. 2 Kirby Drake Kirby Drake Law Since 2002, Kirby has dedicated herself to guiding clients through intellectual property (IP) challenges. A registered patent attorney, she excels in troubleshooting and advising on IP matters, aiding clients in identifying, safeguarding, and maximizing their IP assets. With a focus on demystifying the patent process, Kirby ensures clients comprehend their protection options thoroughly. She caters to diverse entities, from startups to Fortune 500 companies, streamlining the patent process with meticulous attention to detail. Beyond her practice, Kirby champions IP education and advocacy, notably serving as Chair of the IP Section for the State Bar of Texas and the ACS Committee on Patents and Related Matters, fostering IP awareness and support.
- 3. 3 Introduction Why: Provide an overview of common intellectual property (IP) issues that arise in contracts. Who: Persons involved in contracts having intellectual property (IP) implications. Biggest Takeaway: Understand how to issue-spot IP issues in contracts including issues of definitions, licenses, representations and warranties, indemnification, and confidentiality and non-disclosure.
- 4. 4 Agenda Identify appropriate IP definitions that should be included depending on the type of contract. Discuss relevant questions to be asked when licenses are to be included in a contract. Highlight the key representations and warranties to be aware of from the buyer/acquirer and seller/owner perspectives. Understand when and how IP indemnification clauses should be utilized. Understand when and how confidentiality and non-disclosure clauses should be included in a contract and whether to have as a separate agreement.
- 5. Identify the appropriate IP definitions that should be included depending on the type of contract 5
- 6. 6 WHAT IS INTELLECTUAL PROPERTY? Patents Trademarks Trade Secrets Copyrights Also may include Confidential/Proprietary Information
- 7. 7 IP Definitions Registered and non-registered IP? Domestic and international IP? Require IP to be reduced to writing to be covered? Also include know-how? Include specific definitions of certain IP, such as patent number or trademark?
- 8. Relevant questions to be asked when licenses are to be included in a contract 8
- 9. 9 Licenses Subsidiaries/affiliates of licensee licensed? What IP is being licensed? What license rights does licensee require?
- 10. 10 Licenses Do third parties working with licensee also need access to licensed IP? What is the term of license? What is fee for license? How will it be paid?
- 11. Key representations and warranties to be aware of from the buyer/acquirer and seller/owner perspectives 11
- 12. 12 Reps and Warranties IP ownership • Seller – avoid making reps and warranties about ownership before owning IP or after date of closing IP infringement • Seller – limit exposure • Buyer/acquirer – place burden on seller to lose something significant if reps and warranties untrue
- 13. When and how IP indemnification clauses should be utilized 13
- 14. 14 Indemnification Seller • Know what you are agreeing to indemnify • Limit time in which required to indemnify • Cap indemnification obligation • Push for control of defense of claims
- 15. When and how confidentiality and non- disclosure clauses should be included in a contract 15
- 16. 16 Confidentiality and Non-Disclosure Define separately or as part of IP definition Consider whether one-way or two-way Define what constitutes a breach and whether it can be cured Exceptions for independent (prior) knowledge or publicly available information Time limitations
- 17. 17 Key Takeaways Important to start with how IP needs to be defined in a given contract so that the parties are on the same page as to what is being covered and what is excluded. Use the checklist of items to consider when fleshing out details of an IP license.
- 18. 18 Key Takeaways Negotiations related to IP indemnification should include addressing the scope and survival of indemnification. Scope of non-disclosure obligation may differ from contract to contract; important to define so that parties know when a disclosure constitutes a breach and whether a breach can be cured.
- 19. 19 QUESTIONS?
- 20. 20 Kirby Drake Call or email and I'd be happy to speak with you more in-depth or answer any questions. Kirby Drake www.kirbydrakelaw.com 972-635-0531 Contact Information kirby@kirbydrakelaw.com