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
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
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 party may
need to continue to allow access to inventors to sign
6. New deal?
Sometimes new arrangements are forged from existing ones.
When this happens, you obviously need to pick where to enter
the above flow. Usually somewhere between due diligence and
formation of an agreement. Don't forget to ensure that
the intellectual property issues are dealt with fully, even
though you have an existing relationship.
Finally, there were some great questions on the call (and
thanks again everyone for those). Here's a quick
summary of some of them:
patent reform in Europe and the US and impact on patent
'trolls' (amongst other things, I suggested
that the 'troll' problem would be largely
dampened if winning parties in IP disputes in the US were
able to seek some of the attorney's costs from the
losing party. This is standard practice in many
the status of intellectual property in China and where to
from here (it's not as bad as people say –
you can get a patent infringement judgment faster and cheaper
than just about anywhere else, enforcing it against
'phoeni&xrsquo; companies can be difficult)
Eastern vs Western philosphilies on IP and what this
means for the fuure. (I don't think that there is a
discernable 'East' vs 'West'
anymore. However, there are some cultural differences in the
way property rights are viewed. I think there is a growing
(and often overlooked, at least by attorneys) movement in
'open innovation' and that this is only going
to become more important over time.)
Jurisdictional differences in the way IP is handled.
(India vs China, vs Germany, vs US, etc.)
Is intellectual property law progressing along the road
to harmonisation? (Yes, but slowly – look at Europe
for an example of the long periods of time that are required.
Look at the DSS v European Central Bank patent litigation for
an example of how the same patent claims and the same law can
be interpreted differently in different countries, partly due
to procedural issues, evidence that can be led, etc,
Finally, you might want to take a look at our scorecards to
track intellectual property strategy as it unfolds.
Here's a list:
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
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