Marks & Clerk

This Precedent is a suggested definition for the term ‘intellectual property rights’, a term which is commonly used in agreements. The term ‘intellectual property rights’ can encompass a large number of rights so including a definition in agreements that involve intellectual property, whether as the main object or as an ancillary consideration, provides clarity regarding the rights covered. This definition is often used in conjunction with the defined terms ‘know-how’ and ‘confidential information’. It may also be necessary to define individual intellectual property rights separately either instead of or in addition to providing a general definition of ‘intellectual property rights’.

This Precedent Intellectual Property Rights Schedule will generally be used in conjunction with a definition for Intellectual Property Rights. When intellectual property rights or individual intellectual property rights are defined, it is sometimes beneficial to exhaustively or non-exhaustively set out the intellectual property rights concerned in an Intellectual Property Rights Schedule.

This Precedent is a form of IP due diligence questionnaire. It sets out example questions which a buyer may wish to ask a seller about the IP that is owned and/or used by the target company or business. These questions would typically be set out as a separate paragraph within a broader legal due diligence questionnaire relating to a share or asset purchase. Legal due diligence questionnaires are prepared by the buyer and its advisers and sent to the seller (or its advisers) so as to initiate the due diligence process, by which the buyer investigates the target company or business and identifies any potential areas of concern prior to entering into the purchase agreement.

This Precedent is an IP evaluation and licence option agreement drafted from the perspective of the potential licensee. It contains provisions for the owner of intellectual property rights to grant a potential licensee the opportunity to review those intellectual property rights, including any patents and related know-how (defined as ‘Technology IP’ in the Precedent) so that the potential licensee can decide whether to commence formal licence negotiations under the option provisions. If negotiations commence, the parties may or may not proceed to finalising and executing the licence. Although patents are specifically alluded to, this Precedent can be used when any type of IP is the subject of the option.

This Precedent is an IP evaluation and licence option agreement drafted from the perspective of the potential licensor. It contains provisions for the owner of intellectual property rights to grant a potential licensee the opportunity to review those intellectual property rights, including any patents and related know-how (defined as ‘Technology IP’ in the Precedent) so that the potential licensee can decide whether to commence formal licence negotiations under the option provisions. If negotiations commence, the parties may or may not proceed to finalising and executing the licence. Although patents are specifically alluded to, this Precedent can be used when any type of IP is the subject of the option.

This Precedent is a definition for the term ‘territory’, to be included in the definitions and interpretation clause of an agreement. It provides an option for a simple definition of territory based on listing the specific countries forming the intended territory, and an option for a definition of territory based on membership of the European Union which accommodates the potential issue of Member States exiting the European Union. One purpose of such a boilerplate clause is to allow the parties to define any terms that are used throughout an agreement, gathering them in one place for ease of reference.

This Precedent is a suggested definition for the term ‘trade secret’. In addition to clarifying when confidential information will qualify as a trade secret it also incorporates the new definition of trade secret provided in Regulation 2 of the Trade Secrets (Enforcement etc) Regulations 2018, the Trade Secrets Regulations (which transposed the provisions of Directive 2016/943/EU, the Trade Secrets Directive, into UK law). This definition of trade secret can be included in the definitions and interpretation clause of an agreement and is usually used in conjunction with the defined term Intellectual Property Rights.