KEY PROVISIONS
- Representations and warranties
- Quality control, where applicable
- Restrictions on use, marketing, geographic area, etc
- Marking, advertising requirements
- Components surviving expiration⁄termination
- Duty to assign, to maintain trade secrets, non-compete
- Encumbrances in security agreements, financing statements,
- Title retention agreements, other documents creating a lien, security interest or similar interest.
Licensing agreements
- Review all licensing agreements to ensure that the company is continually in compliance with the terms of such licenses and whether they further the current and future business plans of the company.
Assignment agreements
- Review to determine whether the company was granted an assignment from every inventor or author of a work and whether the license was exclusive. Contact all licensors and assignors to determine whether any security interests or liens have been granted in the IP assets.
Employment and Contractor agreements
- Provisions governing the transfer of the IP rights from employees or contractors to the company.
- Terms and conditions under which a contractor is allowed to use IP.
- Clauses setting restrictions on the disclosure or use of confidential information during or after the completion or termination of the employment⁄contract.
- Provisions defining the employees’ obligation to assist in the protection of IP rights.
- The extent, scope and enforceability of non-compete and non-solicitation provisions
Joint Venture & Collaborative Agreements
- Clarify IP assets ownership pre-dating or when created through the joint venture or collaboration.
- Define a system for identifying protectable intellectual property resulting from the cooperation.
- Identify who pays for IP application, registration, and enforcement.
- Determine the scope of IP contributed to the joint venture.
- Determine which IP rights can be used by whom when the joint venture or collaboration ends.
Grants
- Often government procurement contracts and government or foundation funded R&D agreements provide for ownership of IP rights in favor of the government or a government agency, and must therefore all such contracts should be closely reviewed for such limitations.
OTHER...
- Technology transfer, or know how, or technical assistance agreements
- Design and development agreements
- Settlement agreements
- Franchise agreements
- Royalty agreements
- Marketing agreements
- Distribution⁄Distributorship agreements
- Sales representative agreements
- Consulting or management agreements
- Outsourcing agreements
- Maintenance and repair agreements
- Material transfer agreements
- Programming agreements