IP Strategy, Contracts And Commercial Relationship Management

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

IACCM.

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

   (eg.

   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...