Intellectual Property Rep

The Intellectual Property Representation (on ContractStandards) appears to have been built over time, incrementally adding more and more language. All clauses example share common elements, such as the disclosure of registered IP, declaration of rights of ownership and representations regarding non-infringement. However, with respect to less frequently appearing clause elements there is a very wide range of optional provisions and little consistency in their occurrence. The result is a listing of overlapping representations, without a clear reference to what technology platforms they apply, other than a generic concept of “intellectual property” that spans everything from inchoate ideas to commercial software packages.

The proposed organizing theme (a work in progress) builds the clause components from a business framework, offering a matrix of configurable clause components that can be inserted if applicable to the representing party.

	Disclosure	Ownership	Warranties	Sufficiency	IP Protection	Compliance
Proprietary IP
Registered IP	ü	ü		ü	ü	ü
Commercial IP	ü	ü	ü	ü	ü	ü
Proprietary Operational IP	ü	ü	ü	ü	ü	ü
Conceptual IP					ü	ü
Licensed IP
Licensed Operational IP	ü		ü	ü	ü	ü

Registered IP: patents, trademarks, copyrights, and domain names protected by registration.

Commercial IP: intellectual property products and services sold or licensed.

Operational IP: intellectual products, services and content developed, commissioned, acquired or customized used to manage business operations, separated into commercially available technology and customized technology. Operational IP may be owned or licensed.

Conceptual IP: inventions, ideas, concepts and trade secrets.

(Note: optional clause language should be added whether the representing party has re-seller or distribution rights to IP owned by a third party).

Using the framework, the IP representations can be applied to each definitional category, adjusting the reps appropriately based on proprietary rights. For example, in the case of an acquisition agreement, warranties given for commercial IP (out-bound license agreements) should mirror the warranties in the party’s software license agreements. However, there are frequently significant differences between the warranties offered by a business to its licensees (typically very limited) and the warranties given by the same company to a buyer of the business (often including performance and error-free warranties). On the hand, warranties given for licensed software used to run a business (in-bound license agreements) and customized technology may require that the technology is substantially error-free.