Contracts and Licensing Attorney
A contract is an agreement between two or more people or companies in which each has promised to perform or not perform certain tasks or has been given certain rights by the other party or both. Contracts can vary in complexity from a simple agreement for the purchase of a product to an agreement in which each party has agreed to perform multiple tasks over a long period of time contingent upon conditions that must be satisfied before performance is required. Contracts may also be directed to many different subjects, including the sale of goods or services, the purchase of assets, joint research and development, or intellectual property.
We counsel clients in all aspects of contracts, including the following:
- Negotiating Contracts. Negotiating contract terms and conditions is often the key to developing a final set of terms that are acceptable and enforceable. Depending upon the complexity of the deal, many factors affect the negotiation strategy. For example, the terms and conditions must be consistent with the overall objectives of the contract from a business perspective. Only after evaluating such factors can an effective negotiating strategy be developed and implemented. We develop contract negotiating strategies to help our clients accomplish their overall business goals.
- Drafting Contracts. Drafting the terms and conditions of the contract is as important as negotiating them. Not only are there several legal requirements that must be met for a contract to be binding and enforceable, but too often attorneys routinely add boilerplate provisions (e.g., mediation or arbitration provisions, disclaimers of express and implied warranties, indemnification provisions, etc.) without considering their impact on the particular business deal at hand. Contract drafting is perhaps most important long after the parties have signed the contract. Because the written contract is typically the definitive source of the parties’ agreement, it is the document used to determine whether a breach has occurred. We draft contracts to provide a clear understanding of the promises each party has made and the conditions that must be met during the term of the contract. We also work closely with our clients to make sure they understand their rights and obligations and, in particular, the implications of a breach.
- Monitoring Contract Obligations and Rights. Once the contract is negotiated, drafted, and signed, the parties must perform their promises. However, in many situations, a party may fail to perform an obligation or may waive a given right because such obligations or rights may not become due until long after the contract has been signed. In these cases, it is important to have a system to manage and track contract obligations. We establish systems that allow our clients to monitor and track their own obligations and rights during the term of a contract, as well as the obligations and rights of the other party.
- Dispute Resolution and Litigation. In some situations, contractual obligations are broken or breached causing the other party harm or monetary loss, and the damaged party must decide what action to take. In other cases, one party erroneously believes that the contract has been breached or interprets the contract differently. Some options for resolving these disputes include negotiating a settlement between the parties, using a mediator to assist in settling the dispute, or using formal arbitration to decide whether a breach occurred and the amount of monetary damages. In fact, depending upon the contract, the parties may be required to pursue some form of alternative dispute resolution process. We represent clients in all dispute resolutions processes, including mediation and arbitration. When such processes fail or when the parties cannot agree to alternative dispute resolution, litigation often results. We vigorously represent both plaintiffs and defendants in contract litigation through all phases of litigation, including trial.
- Licensing. One particularly complicated contract is an intellectual property license. This type of contract is basically a promise, referred to as a grant, by the owner of the intellectual property (“Licensor”) not to sue the other party (“Licensee”) for using the intellectual property. This grant is typically given in exchange for some payment, referred to as a royalty. What makes this type of agreement complex is that each of the various types of intellectual property (i.e., copyright, patent, trademark, and trade secret) have unique characteristics and give the owner different rights that can be licensed. For example, a patent gives its owner the right to exclude others from making, using, selling, offering for sale, and importing the invention covered by the patent. Accordingly, the patent owner may choose to license only the right to use the invention covered by the patent but not the right to make or sell it. On the other hand, a trademark gives the owner the right to prevent others from using a confusingly similar mark or sometimes from diluting the owner’s trademark. Therefore, a trademark license agreement will address very different rights than a patent license agreement. Moreover, some intellectual property license agreements, such as software licenses, may implicate more than one form of intellectual property (copyrights, patents, and trade secrets) and each of these forms would need to be considered in drafting the agreement.
We have significant experience in drafting a wide range of business and intellectual property contracts. For example, Owens Tarabichi attorneys have drafted and negotiated complex license agreements for patents, copyrights, trademarks, and trade secrets; confidentiality or non-disclosure agreements (NDA); intellectual property assignment and sale agreements; joint development agreements; biotechnology agreements, such as material transfer and clinical trial agreements; software agreements, such as development, value added reseller (VAR), and end-user agreements; and settlement agreements for litigation matters. We have also drafted, negotiated, and reviewed intellectual property provisions in all types of business contracts, including major asset purchase agreements, merger agreements, asset acquisition agreements, joint venture agreements, company formation documents, and employment agreements
- Due Diligence Reviews. In many situations, our clients need a review of existing contracts to make certain business decisions, which are often referred to as due diligence reviews. In some cases, the client is not a party to these contracts. For example, the purchaser of a business or asset may inherit certain contracts and obligations previously agreed to by the seller. In those cases in which we represent the purchaser, we review all such contracts that may affect the sale of the business or asset, and we help our clients understand all of the contractual obligations they may be inheriting as a result of the purchase. Where our client is planning to license intellectual property from another party, we review all contracts entered into by the licensor that affect the intellectual property to ensure that the licensor has the proper authority to enter into the license agreement with our client. In addition, we provide due diligence reviews of intellectual property assets themselves.
We also review our clients’ existing contracts to evaluate the implications on proposed business decisions and strategic planning. For example, a company may have licensed its intellectual property and later decide that it wants to use or license that intellectual property. In this case, evaluation of the existing license will determine whether the proposed new use or license is possible. Where a company has previously entered into a contract and has certain obligations yet to be performed but would like to proceed in a manner contrary to those obligations, we review these obligations and provide our clients with various options, such as possible contract amendments, advice on the consequences of breach, and advice on ways to possibly reconcile fulfilling those obligations and proceeding as desired.