Ip Agreements For Start Ups
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Important Agreements and Negotiation Strategies For Start Ups
Dr. Kalyan C. Kankanala [email protected] 91-80-41489502/04 www.brainleague.com Blog: www.indianipinfo.blogspot.com IP Newsletter - IP Convergence - Register at www.brainleague.com
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
• Non-Disclosure Agreement
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Clauses • Confidential Information • Permitted Purpose • Scope of Disclosure • Purpose • Parties • Legal Instruments • Term • Survival • Remedies • Other clauses
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
• Employment Agreement
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Clauses • Intellectual Property • Ownership • General • Specific
• • • • • • •
Transfer Documentation and Support Third Party IP Confidentiality Non-competition Non-solicitation Moon-lighting
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
• Patent Agreements
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Transfer of Patents • Assignment • License
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Assignment • • • •
Transfer of Ownership Partial or Complete Writing and Signature Register
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
License • • • • • •
Authorization or Permission Exclusive Rights Territory Writing Signature Register
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Types of Licenses • • •
Exclusive Non-exclusive Sole
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Important clauses • • • • •
Recitals Definitions Grant Royalties Term and Termination Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Recitals • Parties – Licensor/Licensee • Addresses • Dates • Background of the transaction
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Definitions • Interpretation clause • Consistently used words – Specific/certain/lucid
• Attribute specific meaning • Apply to entire agreement
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Examples • Licensor shall mean ABC company having a place of business in Bangalore and shall include its subsidiaries, assignees and legal representatives. • Licensee shall mean Kalyan, resident of xyz, Bangalore and shall include his successors, assignees, administrators, executors and other legal representatives. • Licensed Patent shall mean patents granted in USA under patent numbers xxx, yyy and patent applications pending before Indian Patent Office having filing numbers xxx, and YYY. Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Grant Clause • Most important • Defines scope of agreement • States – – – – – –
Parties Type Subject Rights Territory Term Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Example • Licensor grants to Licensee a nonexclusive license to use the Licensed Software within the territory of India from 1st January, 2005 to 1st January, 2006. • This clause specifies – Who grants to whom -Licensor to Licensee. – Type of license - Nonexclusive License – Rights – Use Licensed Software – Territory - India – Dates - January, 2005 to 1st January, 2006 Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Term and Termination • Term • Events – Material Breach - Nonpayment of royalty, etc. – Bankruptcy – Insolvency – Act of god
• Rights after termination • Confidentiality
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Example • Unless earlier terminated as hereinafter provided, this Agreement shall extend to each country in the Territory for a term of ten (10) years from the Effective Date. The term of the agreement is renewable at the option of the parties and such term and conditions shall be finalized after negotiations based on terms agreeable to both the parties.
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Royalty Clause • Type of Royalty
– Lump sum royalty – Fixed Royalty – Running royalty
• • • •
Combination. Mode and Date of payment Accounting and Record keeping Non payment consequences.
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Example • XYZ agrees to pay ABC, a fixed royalty of TwentyThousand-Dollars ($ 20,000) per every Calendar Year after the first year. For the first Calendar Year, XYZ shall pay ABC a fixed royalty of Ten-Thousand Dollars ($ 10,000). Such sum shall be paid on or before December 11th of every Calendar Year.
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Other Clauses • Indemnity • Warranty • Liability
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
NRDC V. ABS • • • •
Patent License Not registered Expiry of patent term License invalid
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
• Other Agreements
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Clauses • Intellectual Property – – – – – –
Pre-existing IP Ownership Transfer and Documentation Inventorship Third Party IP Warranty and Indemnity
• Confidentiality • Exclusivity and Non-Competition
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Any Questions, Comments or Observations?
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Dr. Kalyan C. Kankanala [email protected] 91-80-41489502/04 www.brainleague.com Blog: www.indianipinfo.blogspot.com IP Newsletter - IP Convergence - Register at www.brainleague.com
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
• Non-Disclosure Agreement
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Clauses • Confidential Information • Permitted Purpose • Scope of Disclosure • Purpose • Parties • Legal Instruments • Term • Survival • Remedies • Other clauses
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
• Employment Agreement
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Clauses • Intellectual Property • Ownership • General • Specific
• • • • • • •
Transfer Documentation and Support Third Party IP Confidentiality Non-competition Non-solicitation Moon-lighting
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
• Patent Agreements
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Transfer of Patents • Assignment • License
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Assignment • • • •
Transfer of Ownership Partial or Complete Writing and Signature Register
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
License • • • • • •
Authorization or Permission Exclusive Rights Territory Writing Signature Register
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Types of Licenses • • •
Exclusive Non-exclusive Sole
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Important clauses • • • • •
Recitals Definitions Grant Royalties Term and Termination Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Recitals • Parties – Licensor/Licensee • Addresses • Dates • Background of the transaction
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Definitions • Interpretation clause • Consistently used words – Specific/certain/lucid
• Attribute specific meaning • Apply to entire agreement
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Examples • Licensor shall mean ABC company having a place of business in Bangalore and shall include its subsidiaries, assignees and legal representatives. • Licensee shall mean Kalyan, resident of xyz, Bangalore and shall include his successors, assignees, administrators, executors and other legal representatives. • Licensed Patent shall mean patents granted in USA under patent numbers xxx, yyy and patent applications pending before Indian Patent Office having filing numbers xxx, and YYY. Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Grant Clause • Most important • Defines scope of agreement • States – – – – – –
Parties Type Subject Rights Territory Term Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Example • Licensor grants to Licensee a nonexclusive license to use the Licensed Software within the territory of India from 1st January, 2005 to 1st January, 2006. • This clause specifies – Who grants to whom -Licensor to Licensee. – Type of license - Nonexclusive License – Rights – Use Licensed Software – Territory - India – Dates - January, 2005 to 1st January, 2006 Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Term and Termination • Term • Events – Material Breach - Nonpayment of royalty, etc. – Bankruptcy – Insolvency – Act of god
• Rights after termination • Confidentiality
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Example • Unless earlier terminated as hereinafter provided, this Agreement shall extend to each country in the Territory for a term of ten (10) years from the Effective Date. The term of the agreement is renewable at the option of the parties and such term and conditions shall be finalized after negotiations based on terms agreeable to both the parties.
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Royalty Clause • Type of Royalty
– Lump sum royalty – Fixed Royalty – Running royalty
• • • •
Combination. Mode and Date of payment Accounting and Record keeping Non payment consequences.
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Example • XYZ agrees to pay ABC, a fixed royalty of TwentyThousand-Dollars ($ 20,000) per every Calendar Year after the first year. For the first Calendar Year, XYZ shall pay ABC a fixed royalty of Ten-Thousand Dollars ($ 10,000). Such sum shall be paid on or before December 11th of every Calendar Year.
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Other Clauses • Indemnity • Warranty • Liability
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
NRDC V. ABS • • • •
Patent License Not registered Expiry of patent term License invalid
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
• Other Agreements
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Clauses • Intellectual Property – – – – – –
Pre-existing IP Ownership Transfer and Documentation Inventorship Third Party IP Warranty and Indemnity
• Confidentiality • Exclusivity and Non-Competition
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
Any Questions, Comments or Observations?
Copyright, Brain League IP Services, 2009. Non-commercial use is permitted.
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