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“No-one ever litigates the wording of an NDA”: wrong!

There have been several articles on this blog about confidentiality agreements. This golden oldie, from 2013, reminds us that the wording of these agreements matters and will be applied by the courts.

IP Draughts

consensuSome people regard the signing of confidentiality agreements (sometimes known as non-disclosure agreements, or NDAs) as symbolic – merely a gesture of good faith.  According to this view:

  • What matters is that a document called an NDA is signed.
  • The detailed wording of the NDA is not important.  For instance, it doesn’t matter that the NDA includes strict conditions on the confidentiality obligations, eg a requirement to confirm orally-disclosed information in writing within 30 days of the oral disclosure.  It certainly isn’t worth negotiating the wording, even though no-one is planning to keep detailed notes of the confidential discussions and send those notes to the other party as evidence of what has been disclosed.
  • The court will ignore the wording of the agreement and give effect to the general business intention that the information should be treated confidentially.
  • Anyway, who goes to court over the obligations in NDAs, and how…

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When should a purchaser indemnify a supplier?

Another golden oldie, this time ruminating on why service providers seek indemnities from their customers. Often, these indemnities are written in turgid, impenetrable prose, but that is a separate issue.

IP Draughts

safety firstSupppliers of goods and services sometimes require their business customers to indemnify them against third party claims arising from the use of those goods and services.

IP Draughts has reviewed several contracts recently where strong indemnity terms have been included.  This seems to be a trend; IP Draughts doesn’t recall so many contracts having such strong terms in the past, but maybe his memory is failing.  Recent examples to cross IP Draughts’ desk have included the terms of business of two companies that provide IP strategy services, and the master services agreements of several CROs – Clinical Research Organisations – that provide services supporting the clinical development of pharmaceutical products.

Professional services

Whether any indemnity is included in a commercial contract is a matter of commercial policy, which may be informed by practice in the relevant industry sector.  For instance, the standard terms of engagement of Anderson Law LLP do

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Do you need a science degree to be a good IP lawyer?

This golden oldie comes in at number 20 in the hit parade of most popular articles on this blog. It was written before our IP transactions course started, and the course has recently had its fifth annual outing. Otherwise, the article stands up today. Penny Gilbert and Sally Field are still leading examples of the scientist versus non-scientist who becomes an eminent practitioner in IP litigation. Both are ranked in the gold category for patent litigation in this year’s IAM Patent 1000 rankings.

IP Draughts

Many good intellectual property lawyers have science degrees.  Some have several – IP Draughts can think of one well-known IP barrister who, in addition to his legal qualifications, has a PhD in applied mathematics and an MSc in economics, and is currently studying for a chemistry degree in his spare time.

For some areas of patent litigation, a scientific training can be useful.  Penny Gilbert (DPhil in molecular biology from Oxford), the doyenne of biotech patent litigation and co-founder of Powell Gilbert, springs to mind.  Some IP litigators consider a science degree far better than a law degree as preparation for legal practice.  However, opinions vary.  Some highly-respected IP litigators have (only) law degrees, eg Sally Field of Bristows.

In most cases, UK IP lawyers either have an undergraduate science degree or an undergraduate law degree, and not both (although, increasingly, non-law graduates who pursue the legal practice courses are…

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Dreadful drafting of grant clause

After a couple of weeks of navel-gazing, let’s get back to basics with this golden oldie! IP Draughts continues to think that software licensing is a cuckoo in the nest of IP licensing, not really part of the family but treated as a family member.

IP Draughts

cainIP Draughts and his colleagues have some standard training materials that they use for teaching the principles of contract drafting.  These materials include a slide that consists of a badly-drafted licence clause, on which they invite comments from the audience.  For example, IP Draughts will be using a version of the following slide when he presents some sessions at the forthcoming PraxisUnico Advanced Licensing course, to be held at the University of Loughborough in a couple of weeks’ time.

grant clause

Points for discussion in the above slide include:

  • “grants and conveys” – why?
  • “sole and exclusive” – why?
  • licence under which IP? Does this need to be stated?
  • list of permitted acts – appropriate?
  • have made + have supplied = sublicensing by the back door?
  • use of names Licensor and Licensee
  • other points that may need to be included somewhere in agreement, eg whether sub-licensing is allowed

Imagine our surprise…

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