When we talk about an intellectual property contract, we are not just limited to the license to use a brand or patent exploitation, or the good old confidentiality contract. Although these are two well-known types of contracts involving intellectual property rights, the existing range is much greater and must be known and applied by all those concerned with protecting and enhancing their intellectual assets.
Among the important contractual types to know and apply are the assignment or license agreements for the use/exploitation of trademarks, patents and industrial designs, know-how transfer agreements, technical assistance agreements, franchise agreements, rights assignment agreements copyright, non-competition agreement, among many others. Due to the variety of contractual types and also the complexity of some clauses that can sometimes make a deal unfeasible or make it unfavorable, there is a need to explain important aspects of Intellectual Property contracts.
Initially, what is sought is to highlight some clauses involving intellectual property in different contracts, considering what is of interest to the businessman and entrepreneur, developing, in the next editions, specific themes about the types of technology transfer contracts.
Bearing in mind that the development and creation sector has been one of the most valued in the job market today, imagine that in a contract signed between a company and a team of scientists specialized in the development and application of technologies, the team is hired by company to develop a technology capable of solving problems in a given production situation, resulting in a patent. The company can agree with the development team that the ownership of the protection and, therefore, the economic rights arising from the patent - freedom of licensing, economic exploitation and antitrust - are its own, but that the indication of the creation remains reserved for the inventors. This is a very important clause of intellectual property that guarantees the patent ownership of the one who is the contractor of the technology development service, safeguarding the right of ownership and the possibility of obtaining economic benefit from the creation.
In general, in contracts involving an employment relationship between the company and its employee, for the provision of R&D (Research and Development) services, the correct indication of such activities in the employment contract is essential to ensure the rights of the company. In general, the Industrial Property Law (Law n. 9,279, of May 14, 1996) and the Software Law (Law n. 9,609, of February 19, 1998), for example, provide that intellectual property belongs exclusively to the employer in cases of software development during the term of the employment relationship, but in other cases where the law does not determine the ownership of the creation, it is imperative to contractually stipulate the ownership of the resulting patrimonial rights, specifying the type of creation for which the employee/collaborator was specifically hired.
Another point of attention when in commercial negotiations is to have the guarantee of secrecy of information and business techniques, that is, secrecy of intellectual assets and know -how. Therefore, it is common for an NDA (Non Disclosure Agreement ), or better known as a confidentiality agreement, in order to protect information - usually business secrets - that may possibly come to the attention of the other party involved, but which must not be disclosed. This form of agreement can come through a specific and separate contract, or it can be presented through a clause attached to the main contract. For it to be valid, the confidentiality clause must state what is understood by confidential information and what are the processes and information that must be kept confidential, making clear the foreseen sanction in case of non-compliance with the agreement.
Another example of an important clause involving intellectual property is the forecast of exclusivity in exploitation in a technology transfer contract, since it increases the valuation of the business, allowing exclusivity in licensing for exploitation of a certain patent or use of a certain brand. In these cases, it is also worth mentioning the need for registration with the INPI to guarantee the enforceability of the contract to third parties and the possibility of sending royalties abroad, in a contract signed with a foreign party. The value assigned as royalties depends on their exclusivity contracts, the degree of technological development, the quality of the technology being negotiated, the effectiveness of technology protection, market dynamics and expected profitability.
These are some common clauses to be found in day-to-day business contracts that deserve to be highlighted for their enormous importance in the protection of intellectual assets. The importance of a well-written clause and a signalagmatic contract is immeasurable for the entrepreneur, who must always be concerned with the obligations and duties assumed through an agreement.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
