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Just get the deal done!

This golden oldie is *trending* so I thought it might be interesting to reblog it.

IP Draughts

try harderRonald Reagan once declared that the most terrifying words in the English language were: I’m from the Government, and I’m here to help. IP Draughts has a candidate for the most frustrating words that a contract negotiator will hear: just get the deal done.

Typically these words are uttered by a senior executive who has no direct involvement in the negotiations, and who is impatient for an agreement to be signed.  They may be passed down through several layers of management, like Chinese whispers, until they reach the poor, bloody infantry who are trying to ensure that the contract terms are appropriate for the organisation.

sopOften, it is not clear what this message means. IP Draughts would like to suggest that companies implement a Standard Operating Procedure (SOP) for Pressurising Negotiators. This will ensure that senior executives and contract negotiators have a clear understanding of their roles and…

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Subject to the jurisdiction of the English courts: exclusive?

This week’s golden oldie on choice of jurisdiction is a companion piece to a recent one on choice of law. Search for other articles on this blog which deal with other aspects of these subjects, including use of arbitration.

IP Draughts

inclusiveA small, but important, contract-drafting point: imagine a contract clause that says that disputes will be subject to the jurisdiction of the English courts. Should we interpret this to mean that the English courts will have exclusive jurisdiction, or might it mean that the English courts have only non-exclusive jurisdiction?

A well-drafted contract will state explicitly which law and jurisdiction governs the contract, and whether the jurisdiction is exclusive or non-exclusive.

If the contract states that English jurisdiction is exclusive, the parties must go to the English courts. If a party starts an action in another court (let’s say in China), the English court may order that party to stop proceeding in the Chinese courts. If the order is not complied with, the English court may commit the non-complying party to prison for contempt of court.

If the contract states that English jurisdiction is non-exclusive, a party can ask an…

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Which law should govern my IP contract?

Another golden oldie. Will Brexit affect the analysis when deciding which law to choose? Probably not, as surely the UK government will see sense in continuing to participate in the Rome Convention or something very similar. International legal service are too important for the UK economy for the government to allow little Englander politics to override international participation and cooperation. Or at least that is IP Draughts’ prediction. More reliable than Old Moore’s Almanack? We’ll see in 2 years.

IP Draughts

Many IP contracts are made between parties based in different countries or US states.  Often, one of the points for negotiation is which law should govern the contract.

Sometimes, this point is easily resolved, as in the following examples:

  1. If a Japan-based multinational is negotiating with a small English company, the parties may be happy to agree English law.  The multinational may have English lawyers on its staff, or be willing to pay for external legal advice, and may have a general level of comfort with English law.
  2. If a US-based pharmaceutical company is negotiating the terms of a clinical trial agreement with a French hospital, the company may realise that there is very little chance of the hospital agreeing anything other than French law.  There may, in any case, be advantages in having contract issues (eg indemnities) dealt with under the same system of law as that under which…

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Don’t come to me, if the product I sell you infringes IP

Another golden oldie. If you think of software licensing as the sale of an intangible product, giving an indemnity against IP infringement makes more sense and is aligned with the law on sale of goods.

IP Draughts

Disclaimers can take many forms... Disclaimers can take many forms…

The title of this post is almost poetic.  Recently, IP Draughts was asked for advice on the sale of products by an overseas company to purchasers in the UK.  The products were to be sold to retail businesses, who would resell to consumers.

The question that was raised was whether the contract terms between the client and the retailer could include a provision by which the client excluded liability if the retailer were sued by a third party for IP infringement.

Any such provision would face some legal obstacles.

Section 12 of the (UK) Sale of Goods Act 1979 (SGA) implies into contracts for the sale of goods, in summary:

  1. A condition that the seller has the right to sell the goods; and
  2. A warranty that the buyer will enjoy “quiet possession” of the goods.

In Microbeads v Vinhurst Road Markings [1975] 1 All ER…

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