Non-disclosure agreements are particularly advisable in the contractual negotiation phase, since they allow confidential information to be communicated to the other party, while preserving secrecy thereof. They may however give rise to restrictions on production activity for the party receiving the information, thus requiring careful consideration on a case-by-case basis.
Industrial property rights may be the object of a license to third parties, usually for a consideration in the form of royalties, lump-sum, fees, or combinations thereof. For the licensor, the license constitutes a source of income; for the licensee, the license represents a way to obtain access to a technology or a trademark, which would otherwise be precluded, or would require considerable effort and risk to implement alternative solutions.
However, achieving these objectives requires careful negotiation and definition of the parties’ interests. Industrial property rights can also be the object of a transfer to third parties, as a rule, for a consideration. While in the case of a license, the licensor grants the right to the licensee in use for a fixed period of time, retaining the ownership, in the case of an assignment, the assignor transfers the right to the assignee, definitively depriving himself of the ownership.
For both transfers and licenses of industrial property rights, it is generally advisable, especially for the assignee and the licensee, to carry out a due diligence so as to verify the ownership, validity and scope of the rights to be acquired, and to plan in advance a strategy for the execution of the relevant transcription practices according to the formalities provided for in the various jurisdictions concerned.
Research and development contracts are aimed at sharing knowledge and expertise to develop new products or new production processes. This type of contract involves finding an appropriate balance between the respective interests of the parties, especially as regards the ownership and exploitation of industrial property rights relating to the results of the project. As a rule, it is advisable to define these aspects during negotiations and in the contract, before the work begins, to avoid possible situations of uncertainty at the end of the work.
Supply contracts allow the acquisition of components, products and other resources from outside the company so as to integrate them into the production cycle. Especially in cases where the contract concerns the development of a new product, or a “custom” product, the activity of the parties may generate innovations that can often be protected by industrial property rights. When this situation arises, it is generally advisable to define in the contract the ownership and exploitation rights of the parties with the provision of the relative fees, before the work begins, to avoid situations of uncertainty at the end of the work.
Distribution, selective distribution, franchising, agency and similar contracts allow for the rational and personalized management of the distribution of products in a specific territory and/or towards a specific clientele. Industrial property rights, in particular trademarks but other rights as well, can create an exclusive area in which the company’s products circulate safe from interference and risk of confusion by third parties. These types of contracts require a strategy of filing and protecting trademarks, and any other rights, related to the products and territories of interest and, correlatively, contractual provisions aimed at the proper use of the trademarks in a manner consistent with the corporate image of the owner.
