IP Strategy, Contracts And Commercial Relationship Management

Author:Mr Duncan Bucknell
Profession:Duncan Bucknell Company

IACCM presentation, 31 July 2008

Here are some notes from the presentation given by Duncan on

Global IP Strategy on 30 July (Europe and US) / 31 July

(Australia), ably hosted by Jim Bergman from


The participants all came from Contract and Commercial

Management backgrounds, and so the discussion Duncan planned

focused on five stages of commercial relationships and picked

out a few IP issues at each stage :

  1. Early discussions

    Don't rush into signing NDA's. Sometimes it's

    better not to, particularly if you may end up receiving

    information that you already have, or being bound not to

    compete with something you already knew about. Instead, fully

    understand the meets and bounds of what you can say and speak

    to these.

  2. More detailed discussions / due diligence

    Now may be the time for an NDA. Also, consider using the

    '6Ts' framework to understand your own and the other

    party's intellectual property positions. The 6T's are:

    type of IP, territory, time (until expiry), terminated

    (status), technical scope, true monopoly (validity). You can

    read more about the 6T's in our earlier articles:

    Analysing IP - put simply

    IP Due Diligence - put simply" - with the 6

    T's" framework

    IP freedom to operate put simply", with the

    6T's" framework

  3. Formation of an agreement

    Here you may be negotiating an agreement, and the usual

    terms need to be considered. (Readers will be familiar with

    these, but they include: ownership of current and future IP,

    cross licences, exclusivitiy, enforcement, warranties,

    indemnities, infringements, etc.)

    On the infringements front, be aware that sometimes third

    parties may be brought into litigation. Two examples are

    sponsored links (eg.

    Google Adwords ) and third party sale of infringing product


    eBay's litigation against Tiffany - eBay was held

    not liable in the US, but liable in France for providing the

    platform on which resold originals as well as counterfeit

    products were sold.)

  4. Ongoing relationship

    You need to have processes in place to properly run the IP

    side of things, some examples are capturing new IP, detecting

    and acting on infringements, and dealing with infringement

    suits aimed against you. A good example is how to deal with non

    practicing entities ('trolls') - what role will

    each entity take, and how will this be dealt with?

  5. Termination

    The agreement ends, but this isn't the end of your

    relationship. You may have ongoing confidentiality obligations,

    confidential information may need to be returned, one...

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