I recently attended and spoke at the Rocky Mountain IP Institute in Denver. It was the second year in a row I have attended and spoken at the Institute. In my opinion, the Rocky Mountain IP Institute is one of the two best IP CLE events (and destinations) in the country. As evidence of that, the following is one of a series of posts from the excellent presentations over the two days of the conference. I encourage you to consider joining me at next year’s Rocky Mountain IP Institute.
This post (cross-posted from my Retail Patent Litigation Blog) focuses upon a presentation by Steve DuPont of Gross Hartman and William Leone of Fulbright & Jaworski looking at how to write agreements to avoid IP disputes. In my experience this is something that every entity is focused on either expressly or implicitly. Here are some of the key takeaways:
- Focus on precise, thoughtful definitions.
- Avoid puzzles. Stay away from complicated, nested provisions and multiple references back to other sections.
- Often it is the drafting party that wants to enforce their contract. And often they have written an overly complex contract. But the more complex the contract, the harder the story is to tell to the judge and jury.
- Of course, a licensee defending against a breach claim may want a very complex agreement as it will be confusing and/or is more likely to have a variety of arguments to avoid the agreement provisions.
- Do not neglect your integration clause. Integration clauses are not just boilerplate. They are critical to make sure that the written contract is the only representation of the parties’ agreement. Integration clauses are the best way to avoid parties bringing promises, sales conversations and email exchanges into the agreement.
- Consider bringing in a litigator to review agreements early. Even if a litigator does not review the agreement before it is executed, bring a litigator in as a dispute arises not after you have gone back and forth multiple times with the opponent in letters or emails.