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14 Cards in this Set
- Front
- Back
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What is the first thing a seller will ask a buyer to do?
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Sign a non-disclosure.
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What are the four stages of due diligence in an IP transaction?
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1. Will assets infringe someone's rights?
2. Evaluate the ownership of the assets that the seller has for IP. 3. Assess validity, enforceability, and the scope of the IP. 4. You want to determine whether there were any agreements that the seller might have entered into that may restrict the buyer, like an exclusive license, limited license, anything that limits what the buyer can do with the IP. |
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What could happen if you don't conduct proper due diligence?
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You could get sued for infringement.
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When conducting due diligence for patents, what is the most important thing to look for?
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Assess whether there are any infringement problems.
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What is a community of interest agreement?
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This is an agreement entered into by two parties, that the parties agree that any communications produced to them by either lawyer is protected by the attorney-client privilege. Both parties must have a COMMON LEGAL INTEREST, meaning both parties must have the same interest from a legal standpoint in connection with the materials that will be shared. The legal interest MUST BE IDENTICAL.
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What have courts found a legal interest to be that satisfies community of interest agreement?
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Exclusive license agreement
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What have courts found not to be a legal interest in regards to a community of interest agreement?
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Acquisition of assets
purchase of a company non-exclusive license Maybe--(courts are split) Mergers |
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Are opinion letters discoverable?
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They can be if the buyer or the seller discloses these opinion letters to each other.
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What does indemnification mean?
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Clear of liabilities because of their warranties, they will stand in your place for the liabilities.
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What is a source code escrow?
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This is when Company A writes a code and wants to license to Company B, but COmpany B is afraid Company A will disperse the source code. A doesn't want to give away the source code. So both parties go to a source code escrow, and Company A puts that source code in the escrow and if A decides to disperse the Code, this would be a triggering event and Company B can now get the software from the escrow agent from the triggering event.
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What are the 4 classes of agreements and the issues related to the enforcement of defense of one of those agreements?
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1. Any agreements or transactions where one party is owner of IP and other party has the right to use IP.
(Licensing, Purchase, and Franchise agreements) 2. Joint Ownership, Both parties of the agreement jointly own the property (Joint development/ventures, Research & Development, Marketing Agreements, Franchise agreements, Strategic alliances, Co-branding agreements) 3. Any transaction where there is a service or product that is being provided by one party to another. (Supply Agreements, Distributor agreements, Value added resale agreements, original equipment manufacture agreements, outsource agreements) 4. Any transaction where there is an indemnification obligation to defend against infringement. |
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What are the 10 issues related to enforcement?
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1. cost
2. the nature of the infringer 3. challenge to validity 4. any defendant or alleged infringer may want to file a counterclaim. 5. Joinder of another party to the lawsuit. 6. Who gets the right to control the enforcement? 7. Who gets the right to control the enforcement? 8. Obligations of parties to cooperate with each other. 9. Who has first right to enforce? 10. Infringement in field of use not party to the agreement, who enforces that infringement in that other field of use? |
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What are the 10 issues related to defense?
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1. Who has the obligation to defend?
2. are there any limitations on that obligations based on modifications? 3. Joint defense? 4. If there is a joint defense, are parties obligated to enter into a joint defense agreement. 5. How settlement will be handled. 6. Alternatives to paying money in a settlement. 7. Does the client have any sort of counterclaims? 8. Who pays the damages? 9. Who is going to pay for the defense? 10. Anytime there is an obligation to defend, out in a provision that triggers obligation upon receiving notice that they are sued or infringing. |
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What types of law are settlement agreements?
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Just state law, because it is a contract and contracts are governed by state law.
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