Transcript International Licensing Common Pitfalls

International Licensing
Common Pitfalls
MBITA – Green Trade Network Summit
September 19, 2008
Rodney A. Alves
Points to Remember







Do not disclose without protection
IP Protection is Territorial
IP laws and procedures are different
International and regional protection
Watch out for IP deadlines
Verify and respect registered IP rights
Plan ahead: define issues and limits with partners
2
Licensing Agreement







Language
Confidentiality
Special Situations
Quality Control
Developments / Upgrades
Royalties
Dispute and Resolution
3
Language
 Is English accepted in foreign countries?
 Parties understand
 Terms with different meanings
 Business
 Cultural
 Legal
 Local Laws
 Local Courts
 Side by Side languages
 Which language prevails?
 One set of signatures?
4
Confidentiality
 Secret
 Who’s?
 Technology
 Revenues, clients, etc.
 Data
 Know-how
 Publications
 Literature/Manuals
 Reports
 Term
 After termination
5
Special Situations
 Exclusiveness
 Enforceability
 Mirror / Consideration
 Territoriality
 Limitation on growth
 Sublicense
 Conditions
 Responsibility
 Revenues
 Non-Compete
 Enforceability
 Consideration
6
Quality Control
 Responsibility
 Who’s?
 Technology
 Revenues, clients, etc.
 Technical Support
 Conditions
 Licensee
 Third Parties
 Structure
 Costs
7
Developments / Upgrades
 Responsibility for updates
 Costs
 Structure
 Requirements
 Ownership
 Conditions
 Registration
 Rights
 Limitations
 Control
8
Royalties
 Structure
 Applicable percentage
 Minimum volume
 Guaranties
 Payment
 Remittance
 Central Banks
 Local Taxes
9
Dispute Resolution
 Law of the Agreement
 Where the issues are likely to arise?
 Local
 Enforcement
 Court choice
 Enforcement
 Convenience of the parties
 Timing
 Mediation and Arbitration
 Local laws
 Pros and cons
 Publicity
 Registration
10
Points to Remember









Do not disclose without protection
IP Protection is Territorial
IP laws and procedures are different
International and regional protection
Watch out for IP deadlines
Verify and respect registered IP rights
Plan ahead: define issues and limits with partners
Know your partners
Get professional help
11