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- Written by Janine Anderegg
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Different types of patent searches
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- First published 04 January 2022 - co-author(s): Moritz Hönig
Patent searches are used to identify information about patents and help to discover technical innovations. The objective of searching for patents is to provide an overview of existing inventions and to discover the state of the art as well as to identify third party intellectual property rights. This is important in order to assess the chances of getting a patent for an invention granted. Another type of search, a so called freedom to operate (FTO) search, is used to check whether a product or process infringes third party patents. Furthermore, patent searches give an insight into the technical progress of a competitor and may serve as inspiration for future developments. For these reasons, there are different types of searches for patents with different objectives:
Assisted patent search (APS)
Patentability searches can be carried out by professional search service providers. A cost-effective alternative for startups is the so-called Assisted Patent Search offered by the Swiss Federal Institute of Intellectual Property (IPI) to Swiss startups, Swiss SMEs, individual inventors from Switzerland and to Swiss public research institutes. During the Assisted Patent Search, a patent search is carried out at the IPI together with the inventor. The APS provides an initial overview of the state of the art in the technology sector of interest in order to assess whether the invention is new and worthy of applying for a patent. In addition, the Assisted Patent Search provides information on the patent system, shows various patent application procedures and will teach the inventor what to pay attention to once the patent has been granted.
Patent Application Search
Novelty and inventive step are two essential requirements for a patent to be granted. As outlined in an earlier blog [LINK], we often recommend startups to file the first patent application in Switzerland as the official filing fees are low. Once the Swiss application has been filed, the applicant may request one of two searches to be performed on the basis of his application: a national search or an international-type search.
National search
In a national patent search, the IPI conducts a search in patent and scientific technical databases. Relevant hits are documents which are prejudicial to novelty or which render an invention obvious. On a side note, it is a virtually universally accepted principle that it is irrelevant for the assessment of patentability if the inventor was actually aware of a given piece of prior art or not. Based on the results, the chance of getting a patent granted may be estimated. This allows to decide the further steps: i) whether the application should be maintained and the application should also be filed abroad, or ii) the patent claims have to be amended or iii) the patent application should be withdrawn. For the Swiss National Search, a search report will be drawn up, which contains all relevant documents found and information on patent family members. A categorization according to international standards shows the importance of the documents for evaluating the invention. The Swiss National Search is a very cost-effective search performed by the IPI and certainly worthwhile for startup companies (CHF 500.00 inclusive up to 10 claims; as of 12/2021).
International-Type-Search
The International-Type-Search has the same purpose as the Swiss National Search. However, this patent search is carried out by the European Patent Office (EPO) and is more expensive. If the applicant later decides to file a European patent application claiming the priority of the first Swiss patent application, it may be advisable to request an International-Type-Search report, since the search fee will be at least partially refunded during the later proceedings before the EPO.
Freedom-to-Operate searches (FTO search)
Freedom-to-Operate (FTO) searches are fundamentally different from prior art searches: Rather than starting with an own invention and asking whether it is patentable, you start with a commercial product or process and ask whether it infringes third party patents. An FTO analysis is used to identify technical IP rights of third-parties which can block the commercial use of a technical product or process. An FTO search provides market-relevant documents, a detailed evaluation and an assessment of the relevance of the documents. In contrast to patentability searches, FTO-related searches may be restricted to those countries for which the commercial use of the technical product or process is planned. However, international and regional patent applications are also taken into account, as national IP rights can also arise from these applications. Furthermore, in the context of an FTO search, only IP rights are relevant which are either still pending or have already been granted and are still active, because only these rights can be infringed. An FTO search is only a snapshot of relevant IP rights, however it can be very cost-intensive and always contains a certain residual risk due to the fact that even an extensive search can never fully exclude the possibility that a relevant patent is simply not found. Additionally, since patent applications are typically published after 18 months from filing, unpublished applications cannot be found and a certain degree of uncertainty will always remain.
Patent monitoring
Patent monitoring is a valuable and relatively cost-efficient tool for startup companies to keep an up-to-date overview of the IP rights of their competitors. Patent monitoring involves patent searches at regular intervals in order to monitor desired fields of technology, competitors in the market as well as legal and procedural status of already known property rights. This may allow an early detection of potentially problematic patent applications of competitors, may prevent cost-intensive duplicate-developments and may better protect the own patent rights.
Sumup
Securing the IP rights of a startup company is crucial in order to secure funding and the long-term benefits from research and development activities. For this reason, it is important to know the relevant technological fields as well as the competitors in the relevant markets to avoid cost-intensive duplicate developments and to achieve market exclusivity. Various patent searches help to achieve these goals. Rentsch Partner AG offers free initial consultation sessions and specific consulting modules tailored to the needs for startup companies to help finding the right search strategy to secure new inventions in order to achieve market exclusivity.
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- Written by Moritz Hönig
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SAQs (Should Ask Questions)
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- First published 26 February 2021 - co-author(s): Jan Kleffmann
There is a plethora of blogs and articles about questions startup entrepreneurs typically ask about IP (including our earlier blog post about patenting tips for Swiss Startups). In contrast to these frequently asked questions, this blog will focus on a selection of questions startup entrepreneurs should ask (or should not ask).
1. What degree of disclosure is required for a “good” patent application?
The patent system is based on a simple deal: protection in the form of a limited monopoly is granted in return for full disclosure of the invention. This basic principle seems to contrast with a common prejudice many people have regarding patents: that they are written in an overly cryptic way that actually leaves the core of the invention ill-defined and vague rather than fully disclosing it. Many inventors are therefore wondering if they can “hide” their invention in the shadows of complicated and, perhaps, even deliberately misleading language. However, this is a dangerous strategy which often leads down a slippery slope of increasing legal uncertainty and risk. In fact, a sufficient disclosure of the invention is required to receive patent protection for the invention.
How a lack of sufficient disclosure can impact patent prosecution
Leaving the exact nature of the invention unclear will likely cause severe problems during prosecution, if not inhibit it altogether. It is a general and necessary requirement in most, if not all jurisdictions in the world that the invention to be protected has to be fully disclosed such that a person skilled in the art can carry it out. This requirement is taken very seriously and interpreted strictly during examination. During and even after examination, many jurisdictions offer mechanisms to attack patents that do not fulfill this criterion, including so called third party observations and opposition proceedings. It should also be noted that it is not possible to leave out crucial information in the patent application at first and then hand them in later upon request by the examiner. The reason for this is the equally important and general concept that you cannot add subject-matter that goes beyond the scope of what was originally disclosed in the application as filed.
Risk of legal uncertainty after prosecution
Additionally, leaving out essential features of your invention poses a difficult-to-estimate, if not unpredictable future risk regarding enforceability. Having a patent just for the sake of it may be great and may convince customers and investors alike of the value of your technology. However, like a bicycle helmet that should not just look good but also protect your brain in an accident, a patent should also be strong enough to be enforceable: This includes being specific enough to clearly identify cases of infringement but also being able to resist the rigorous cross-fire during a fierce nullity suit. Once again, leaving out crucial technical information about the invention renders the patent vulnerable towards attack, which may eventually lead to its revocation.
Options for non-disclosure
Taken together, you should be aware that getting a patent comes at the cost of public disclosure of your technology. In other words, this is another ‘no free lunch’ situation. That being said, while the lunch may not be entirely free, certain discount options may be available: depending on your invention, it is not required to meticulously list every single bit of detail about all different aspects of it. Rather, it is can be sufficient to disclose the concept or the essential features of the technology in order to protect it and to prevent competitors from using it. Additionally, you can strategically decide to only patent and disclose certain aspects of your technology while keeping other aspects a trade secret. Striking this delicate balance of disclosing as much as required but as little as possible at the same time is not easy and usually requires years of experience, preferably in prosecution as well as litigation.
2. How to choose a patent law firm?
Choosing a patent law firm can be a daunting prospect for entrepreneurs who may view patents as a necessary evil rather than a valuable asset. However, there are a few questions to consider when choosing a law firm:
Does the law firm have experience in enforcing patents?
It should be noted that there is a big difference between obtaining a patent in the first place and actually enforcing it in the case of patent infringement. Additionally, many patents are actually infringed unknowingly by third parties and it is frequently up to the patent owner to actively identify cases of infringement and take legal action against them. Accordingly, if you are seeking to potentially enforce your patent as well, it may be advisable to choose a law firm that has experience in patent prosecution as well as enforcing patents and, ultimately, patent litigation. An additional benefit associated with this is that experience in litigation typically enhances the process of drafting a patent: practitioners experienced in both areas tend to draft patents that strike the balance between meeting the patent office’s stringent requirements of examination and enabling the unequivocal identification of cases of infringement.
Is the law firm big or small?
There is obviously no right or wrong answer regarding the size of the law firm. You may simply like the family atmosphere of working with a small law firm. However, larger law firms are frequently able to offer distinct advantages by virtue of their size. As an example, larger law firms typically employ attorneys in different technical areas who can quickly exchange expert opinions and provide insights into their respective fields. These synergies may be particularly advantageous if your invention relates to the interface of different technical areas. Additionally, many larger law firms are able to provide a broad scope of different legal services relating to IP without relying on outside expertise. Having a single law firm covering all aspects of IP is not only convenient for many clients, but frequently also translates into cost-efficiency.
Are there attorneys-at-law in addition to patent attorneys?
Even if you may primarily seek assistance in the technical drafting of patents, it is important to note that many questions relating to patents and, more broadly, intellectual property do not exclusively fall under the realm of patent attorneys but also require the expertise of attorneys-at-law. As an example, such issues may range from standard contracts such as NDA’s and License Agreements to more complex questions about indemnity clauses or the legal caveats of different jurisdictions. Accordingly, it may save you time and effort to choose a law firm that is able to draw on the expertise of attorneys-at-law and patent attorneys and is thus able to provide a holistic solution to all different aspects of intellectual property.
3. Why should startups have an IP strategy?
For startups striking the right balance between short-term success like getting your product ready for the market or launching its new generation and the long-term strategy can be difficult. Having an IP strategy definitely falls into the realm of the long-term strategy. However, it can hardly be overstated how important it is to have at least a rough outline of an IP strategy even as a startup company. This is particularly true if your company depends on a small number of technologies, or even a single technology. A basic IP strategy should include defining the core technological areas and their respective importance for the company as well as a thorough analysis of external IP rights to establish the company’s freedom-to-operate (FTO). The latter is particularly crucial for startups because even the possibility of facing a costly infringement suit is not just dangerous but often fatal.
IP strategy without patents
It should be noted that “developing an IP strategy” does not necessarily have to involve seeking patent protection. Alternative strategies to secure IP such as trade secrets are available and have their own pros and cons, as discussed in detail in several other blogs. Regardless what your IP strategy may look like, having a clear and unified view of it ensures that you consistently apply effective measures to protect one of your key assets, namely your technology.
IP strategy impacts business as a whole
Beyond protection of your core technologies, a clear IP strategy also enables you to make informed strategic decisions about the future development of your technologies. To fulfill this function, it is important that your IP strategy is aligned with your overall business strategy. This becomes even more apparent when you consider how many business implications intellectual property has at different levels across the company, including licensing opportunities, royalties and potential tax deductions on expenses relating to research and development (Patentbox). Consequently, developing an IP strategy early on will not just provide a useful tool for managing already existing IP but will also enable you to proactively guide your research and development such that it will serve your overall business objectives.
Patents can increase chances of attracting funding
Finally, a patent on your core technology will significantly enhance your chances of attracting funding. In fact, many investors increasingly require startups to have at least a pending patent application to be eligible for venture capital, particularly if large sums of money are at stake. This means that the cost of a patent should not be viewed as mere expenditure but rather as an investment.
Outside View
Developing an IP strategy from scratch can be challenging, particularly at the beginning when the core technology areas may still only be vaguely defined. In many cases, an objective outside view from a patent professional can be helpful in discerning the technological and legal boundary conditions that are specific to your company. Drawing on our longstanding and successful experience in consulting startups, we are happy to support you in developing and implementing an IP strategy tailored to your specific business needs. For further information, please contact us under This email address is being protected from spambots. You need JavaScript enabled to view it..
4. Is my invention patentable?
The word patent is frequently associated with groundbreaking achievements such as the development of light bulbs or cars. Awestruck by the genius of Thomas Edison, Carl Benz or Nikola Tesla, many people may not consider their ideas to be worthy of a patent. However, it is a widespread misconception that patents are only available for groundbreaking inventions. In fact, the crucial criterion of “obviousness” or “involvement of an inventive step” is purely qualitative rather than quantitative in many jurisdictions. In other words, even small improvements of the prior art may be eligible for a patent.
Other important criteria
By contrast, there are other criteria an invention has to fulfill in order to be patentable. Some of these criteria, such as the requirement for novelty or susceptibility of industrial application, can be found in one form or another in most jurisdictions. Other criteria, such as what is often referred to as ‘technicity’, are less universal and can be difficult to evaluate. In this respect, questions relating to the patentability of computer-implemented inventions are particularly tricky. Different articles describing the various exceptions to patentability are available, including our blog post on how to protect your AI innovations.
Free Consultation
Many Swiss law firms are part of the Swiss Patent Office’s SME-IP consulting network offering a free consultation of 45 minutes to individuals or small and medium enterprises (for further information, see here). We are proud members of this network and are therefore happy to provide an initial assessment of the patentability of your invention. If you’re interested, please contact us under This email address is being protected from spambots. You need JavaScript enabled to view it..
5. What are best practices for protecting your IP when talking to a third party?
Although this is less of an exotic question, it is nevertheless definitely one you should ask. It can’t be stated too often that you should not publicly disclose any details of your idea until a patent application is filed or it was consciously decided not to seek patent protection for it. Even after filing, it is best to keep your invention secret for as long as possible in order to keep the option of filing further applications on improvements of your technology.
If you still have to disclose parts of or even the entire technology, this should be done only after having every recipient of the information sign a specific non-disclosure agreement (NDA). It should be stressed at this point that the use of a generic NDA available online can be risky, as discussed in more detail in this blog post. Additionally, it is advisable to keep a clean documentation record of your disclosures, which may serve as invaluable evidence in potential future disputes regarding the date of disclosure or even ownership. Specifically, we recommend documenting all internal and external communication, e.g. by keeping and distributing meeting minutes.
6. …?
You have additional questions relating to IP that were not covered in this blog? We are happy to answer them (in anonymized format) in future blogs. If you’re interested, please don’t hesitate to send us your questions under This email address is being protected from spambots. You need JavaScript enabled to view it..
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- Written by Philip Kerpen
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Patents in Different Countries
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- First published 22 January 2021 - co-author(s): Moritz Hönig
Introduction
Patents are national rights that grant the right to exclude others from using the patented invention. In general, a Swiss patent grants the patent holder the exclusive right to prevent others from using the claimed invention in Switzerland. More specifically, if your patent relates to a product, the patent comprises the right to prevent third parties from producing, storing, offering, selling, importing or exporting the relevant product.
To obtain similar protection for your invention abroad, you will need to file patent applications in other jurisdictions. There are several ways and strategies to do this, and in this blog post we will introduce a common strategy for obtaining patent protection abroad which works well for many of our clients.
The „Swiss Classic“
Swiss Application
For many of our clients we suggest filing the first patent application in Switzerland as the official filing fees are low and the patent application can be filed in English, German, French or Italian. We often recommend requesting an international-type patent search at the same time. This patent search is carried out on behalf of the Swiss Federal Institute of Intellectual Property by the European Patent Office (EPO) and lists those prior art documents deemed relevant for the patentability of your invention. The international-type search report is usually received within 4-10 months of the filing date and allows you to re-evaluate your patent application in light of the prior art.
PCT Application
The 12-month period following the filing of the first application is called the priority period, in which you can file other applications in other jurisdictions for the same invention. You can also, and this is what we normally recommend, file a PCT application. The PCT application is an international application which effectively postpones the time point at which you need to decide in which countries you will ultimately seek patent protection.
We recommend filing the PCT application with the EPO. The EPO will provide a written opinion on the patentability of your invention. This gives you another good opportunity to re-evaluate your patent application.
After 18 months, the international patent application is published, along with the results from the international search and the Patent Office’s written opinion on the search report. Up until this point, your application has been subject to strict confidentiality on the part of the patent offices.
Only 30 months after the filing date are you required to make a final decision as to which jurisdictions you wish to continue in with your patent application. For example, you could file for a European patent at the European Patent Office (EPO), file for a US patent at the USPTO, etc.
Ensure Compatibility
As outlined above, one of the major advantages of the “Swiss Classic” is that it allows you to postpone the costly and strategically invaluable decision as to which countries you seek protection in to a later point in time. However, it should be noted that the PCT application does not result in a PCT patent: the PCT application eventually diverts into a number of national and/or regional applications. Therefore, the PCT application should be drafted to be highly compatible with different patent systems. Though the patent systems in different jurisdictions are broadly similar, there are formal as well as substantive differences which invariably impact the way both the priority founding patent application, as well as the international patent application are drafted. For example, the European requirements relating to claiming priority and amended subject matter are stringent, whereas the US patent system is more permissible in this regard. Another example relates to the requirement of sufficient experimental basis to support broad claims in life science patent applications, which tends to be particularly strict in several Asian countries. A patent attorney with a working knowledge of different patent systems is ideal, both for drafting the patent application as well as guiding the patent application through prosecution to grant.
Summary
Normally you would need to decide which countries you want to obtain patent protection in within 12 months of your first filing. By filing a PCT application you can push this out to 30 months. This has the following benefits:
- By receiving the international written opinion before entering the national phase you have a better idea of the patentability of your invention.
- You reduce the administrative burden for the initial phases of prosecution.
- It gives you more time to figure out which key markets you want to obtain protection in.
- The high costs involved with patent prosecution in multiple jurisdictions are pushed into the future for when funding may be more secure.
- Your competitors are kept in the dark for longer as to what your exact patent strategy is and what scope of protection your patent applications will ultimately receive.
This patent strategy works well for many of our clients that are active in different international markets. While popular and widely applicable, this strategy is obviously not a one-size-fits-all solution and other patenting strategies may be more suitable for your specific needs. Please reach out to us to discuss your specific needs in more detail with one of our specialists.
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- Written by Maria Iskic
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Typical contract clauses and their meaning
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- First published 04 December 2020 - co-author(s): Demian Stauber
Have you ever wondered about typical contract clauses and what they actually really mean? Here is a short introduction into clauses that you will find in most commercial agreements.
Preamble / “Whereas”-clauses
Generally, the preamble or “whereas”-clauses set the stage for the agreement. They offer background information and may define the purpose. However, there should not be anything in the preamble, that is part of the agreement between the parties, in particular any obligations. Otherwise, this may be highly confusing and sometimes contradictory or at least unclear, on whether this is background or actual agreement.
Warranty
Under Swiss law, a warranty is one party’s obligation to ensure that a product has the features agreed on in the contract. If this is not the case then the product is faulty, which can trigger several options on the purchaser’s side, such as for instance a right to price reduction. The content and extent of the warranty can be regulated in the agreement between seller and buyer. In particular, the buyer’s options can be fixed to for example a repair of the faulty product.
In international commercial agreements, however, warranty is often used in a much more general sense. Often, warranties are used to describe various obligations of the parties that are specifically agreed by the parties of the contract, followed by specific remedies that apply in case of a breach of any warranties.
Hence, the contractual use of the term warranty is not always consistent and may be combined or even mixed with other legal terms such as guarantee and representations. It is important to carefully read the agreement and to understand the distinctions and consequences for each obligation.
Liability / Exclusion of Liability
The liability determines the financial exposure of a party in case of damages, i.e. monetary losses of the other party. Most laws permit far reaching limitations on liability other than for willful or grossly negligent acts. Very often, the parties agree on an exclusion or cap (maximum amount owed in case of damages) for so called indirect damages (such as loss of profit).
In order to be in a proper position to negotiate liability clauses, one needs to understand the likelihood and potential exposure to certain damages. For instance, if I a buy a product on the performance of which my whole production of goods depends, then loss of profit is likely to be my main risk in case of a breakdown, hence I should be very careful in accepting an exclusion of or even a cap on the liability for loss of profit.
Overall, liability clauses are crucial for assessing the risks of a contract and to check whether they can and should be covered by appropriate insurance policies.
Indemnity
Indemnity is the obligation to pay for any loss or damage that has been or might be incurred by the other party based on claims of any third party. A common reason for including indemnity clauses is the potential violation of third party intellectual property rights. For instance, the buyer of your product may insist that you hold him harmless against any third party who might come after him based on the alleged infringement of intellectual property rights by the product you have sold. Hence, this clause is particularly important if you source third party components (for instance software or products in emerging fields), which you integrate into your products before selling them to your customers.
One should assess the potential exposure to third party claims when negotiating the contract and think of potential alternatives or supplements to an unlimited indemnity, such as replacement / adaptations of potentially infringing products or the taking over of the conduct and responsibilities of any legal proceedings.
Jurisdiction, Dispute Resolution, Applicable Law
Legal proceedings and costs associated with them vary greatly from country to country. If you conclude an international contract without paying attention to the dispute resolution clause, it may well be that your contract is not worth the paper it’s written on. One important item is to determine which court (or the courts of which country) shall be competent to decide the disputed under the agreement. Second, depending on the circumstances, it may be advisable to include an arbitration clause instead of a clause on which state courts shall settle the dispute.
Equally important is to agree on the law governing the agreement. Otherwise, it may well be that you agree on contractual clauses which are not valid under the law of the particular country. Or else, there may be mandatory rules of a country’s law which will apply in addition to what you have agreed in the contract.
Sumup
- Read the contract to the end
- Double-check wording or clauses that you to not understand, do not treat contracts like general terms & conditions in your private life
- Be aware of the different functions of typical clauses and have a list of clauses to identify potentially missing points
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- Written by Demian Stauber
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Typical IP-related Contracts
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- First published 28 October 2020 - co-author(s): Maria Iskic
In this blog, we will shed light on a few standard contract types relevant for safeguarding your intellectual property.
Why care about contracts?
Intellectual property rights are property rights. This means, that someone is the owner of these rights. The owner has the right to determine who may use what is protected by his rights.
Typically, the original owner of intellectual property rights is the creator (note: this does not apply to trademarks), i.e. the individual who makes an invention (patent) or creates a work (copyright). However, as soon as several parties become involved in the creation of intellectual property, the legal reality concerning the rightful owner might often significantly deviate from the expectations of the parties.
For instance, if the original owner is an employee of a company, there are countries in which the rights created by the employee belong directly to his employer or in which the employee is at least required to transfer his rights to his employer if the employer wants to acquire these rights. If on the other hand, you engage a freelancer to create something, the intellectual property rights to that creation might stay with the freelancer, in spite of you having financed the creation.
Another example would be if we have several people from different organizations collaborate, such as in research or development. These joint collaborators may become joint-owners of the new creations. In these circumstances, it should be contractually agreed which party has which rights in the jointly created intellectual property, or you might end up not being able to commercially use your intellectual property without the other person’s consent.
However, these situations can be contractually anticipated and regulated. Intellectual property rights may be transferred from one owner to another owner. This may happen by way of a full transfer of all rights (like a sale, a so called “assignment”,) or by granting someone else certain use rights (like a lease, a so called “license”). The use rights may be customized in particular with regards to the scope, the time or territory.
Finally, contracts may be important to preserve your intellectual property rights in the first place, because patents and design rights may be “forfeited” if you disclose your invention or design to a third party without appropriate confidentiality clauses in place.
Employment Agreement / Freelancer Agreements
As explained above, it is important that intellectual property rights developed by your employees belong to the employer. Therefore, it is advisable to include a standard IP-clause in your employment agreements. If you have employees domiciled abroad, local laws need to be taken into consideration. Further, in certain settings, in particular if some of your employees are still partly employed with Universities, this topic needs to be addressed very carefully.
If you use consultants or other personnel not employed by your company, it is crucial to include in the consulting, freelancer or other agreement rules to ensure that you own the intellectual property rights created by these agents, as if they were employees. Absent such clauses, there is a significant risk that you do not own (all) the intellectual property rights created by these parties despite having funded the respective creation.
Confidentiality Agreement (NDA)
The confidentiality agreement or non-disclosure agreement (NDA) is an agreement that permits the parties to share certain confidential information before entering into any specific contract. Often, NDAs are used to evaluate a possible cooperation, which requires that certain business or technical secrets and know-how are exchanged.
It is crucial to define the scope of the confidential information clearly (for instance: is all information disclosed confidential, or does it need to be marked in a certain way). Further, it is important to keep track of the duration of the agreement and potential “survival” of certain obligations.
Be aware that the typical confidentiality agreement is not an appropriate substitute for the collaboration agreement between the parties. In practice, we often come across relationships of parties for which only an NDA exists. Most NDAs, however, lack provisions on jointly developed intellectual property etc.
Research and Development Agreements
Research and development agreements are the right instrument if you provide or source research services or product/software development. They are not suitable to be used for the manufacturing, sale or supply of the product, which may follow upon the development. However, it may be advisable to already fix some key aspects of a potential supply agreement.
R&D agreements need careful drafting, not only for addressing intellectual property rights but also for various other reasons (such as “do you owe a result or just careful work”, default, warranties, liability, etc. ). From an intellectual property perspective, there need to be rules about existing technology (often referred to as “background”) and access to it as well as clauses on newly developed intellectual property (often referred to as “foreground”). On the foreground, topics such as ownerships, use rights, obligation to prosecute and maintenance of patents, cost etc. need to be addressed.
License Agreements
License agreements are concluded to grant use rights on intellectual property rights that you own. It is key to determine the scope of the license, for instance whether you grant a license to the patent or only for certain products, the geographical scope, whether sublicensing should be allowed, for how long the license lasts, etc.
In return, the remuneration (license fee, royalty) must be clearly defined and understood by both parties. Many disputes arise from unclear provisions pertaining to royalties.
Assignment Agreements
Intellectual property rights can not only be licensed but also transferred to another party. Through an assignment agreement the owner of e.g. a patent transfers all of its rights related to such patent to the assignee which subsequently is the new owner of the right.
It is important to note that the transfer of IP rights requires the compliance with various formalities. Ultimately, the assignment will normally have to be registered with the relevant national authorities. These national authorities may have different requirements to a transfer of rights and often request various documents to ensure the validity of the assignment.
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