Intellectual Property Contract Strategy Office

 

It has been a long time since we called for a country to promote intellectual property, but when it comes to intellectual property, it is important not only to obtain rights but also to protect and utilize it. Contracts have an important meaning in all aspects of acquiring, protecting, and utilizing intellectual property.

For example, when we go shopping at a convenience store, we do not draw up a contract each time, but when purchasing a large purchase such as a car or a house, a contract is signed. Intellectual property can bring huge profits depending on how it is utilized, and if such intellectual property is licensed or transferred based on a verbal agreement, it may not be possible to obtain the profits that should have been obtained. , you may suffer unexpected disadvantages later.

In order to avoid such situations, contracts should be used to maximize profits in each aspect of acquiring, protecting, and utilizing intellectual property, taking into account the customer's business plan. is. To this end, we need to support our clients in realizing their business plans, and provide legal advice to help them avoid getting involved in legal disputes, and even if they do, to minimize the damage that may result from them. .

At our firm, we do not simply provide support in the legal field, but as business strategy advisors, we would like to support business strategy from the perspective of intellectual property strategy, taking into account the client's business plan, so that the client's business succeeds. I am.

Our office already has a ``Technology Transfer Consultation Office'' that handles various contracts related to technology transfer. From the perspective of utilizing intellectual property in business, comprehensive and cross-sectional consideration is essential from a wide perspective, including patents, trademarks, designs, as well as unfair competition prevention laws and copyright laws. Therefore, in addition to the "Technology Transfer Consultation Office," our office has launched the "Intellectual Property Contract Strategy Office."

 

TOPICS

 

 

What is a contract?

Definition

An agreement reached by the free will of the parties that gives rise to debts and credits*1.

①Agreement (matching declaration of intention)
②Causes of receivables and debts

*1 “Claim” refers to the right of a person to request a certain act of payment, etc. from a specific person. This refers to the obligation to perform the act of providing benefits.

 

The purpose of establishing the contract system

To give legal binding force to an agreement between the parties

"Legal binding" means that a court can force a party who does not comply with an agreement to realize it, and the basis for this is that "an agreement made by a person of his or her own free will will always be honored." "The value judgment of 'should'" (modern liberal thought).

*2 If it is determined that it is not based on free will, it will not be legally binding.

 

Formation of a contract

To give legal binding force to an agreement between the parties

A coincidence of intentions is sufficient, and a written document is not necessarily required *3.

↓ However,

If you do not keep it in written form, it will be difficult to prove it if there is a dispute about the details of the agreement at a later date.

↓ So,

Regardless of whether the document is titled a "contract" or not, an agreement is usually made in some kind of written form *4.

*3 Some documents, such as a guarantee contract, may be required (Article XNUMX, Paragraph XNUMX of the Civil Code).
*4 Courts also tend not to recognize the existence of a contract unless there is some kind of written document.

*Characteristics of the contract
①A document representing a business agreement between parties (mainly between companies)
cf. Minutes: A record of progress, not an agreement
② Generate legal debt and debt relationships
cf. Expert opinion: statement of the opinion of the author
→If the other party violates the contract, it becomes a means of directly proving the existence of the contract (i.e., an agreement between the parties), and requires the other party to compulsorily comply with the contract contents or to compensate the other party for damages in lieu of it. I can do it.

Intellectual property rights and contracts

Business activities and intellectual property are linked through the intellectual creation cycle shown below. Furthermore, there are contracts related to intellectual property that are problematic at each stage, as shown on the right. It should be noted that a non-disclosure agreement regarding the handling of technical secrets and trade secrets related to intellectual property is a major premise (although it may be stipulated in various contracts, ).

Points to keep in mind when drafting a contract

Perspective of risk management in business

First, clarify the business relationship you are trying to achieve.

If you are trying to expand your market
→Is it through a local subsidiary or through a license to another company (person)?
When trying to enter the market
→Will you receive a business transfer or a license?

As a pre-contract stage, consider possible business risks.

Analysis of the market, selection of the other party, and confirmation of the status of patent rights, etc. of oneself or the other party in the domestic and foreign countries where the business is being developed (management risk)
→Risk of information leakage and loss of market
→Clear distinction between what should be made open and what should not be made open.
Identifying possible future troubles (legal risks)
→Clarification of the burden on the parties in the event of trouble
→Consideration of necessary credit/debt relationships (various notification obligations, prohibition of sublicenses, etc.)
*Contract creation process
① Creating specific provisions based on the business you are trying to achieve (from the risk management perspective above)
② Addition of necessary general provisions (conditions for cancellation, contract period, governing law and jurisdiction, confidentiality obligations, etc.)
③ Confirm that there are no omissions based on the assumed risks

Contracts and legal binding

If the meaning of the written wording is not clear, a dispute may arise later over its interpretation, and there is a risk that you may be bound based on content you did not intend.

About the wording to use

・As a general rule, do not use wording that could lead to different interpretations.
・Do not use so-called slang terms that are only valid between the parties involved.

Regarding the relationship between contract provisions and laws and regulations

Regarding the legal binding force of a contract, matters not stipulated in the contract are subject to the provisions of related laws and regulations such as the Patent Act and the Civil Code.
In principle, there is no problem in having provisions in the contract that differ from the provisions of the relevant laws and regulations. However, please note that provisions in the contract that conflict with mandatory laws such as the Antimonopoly Act will be invalidated.

*Examples of related laws and mandatory laws that should be noted in contracts related to intellectual property (some examples)
Patent Law Article 73 (Patent rights related to joint ownership)
Patent Law Article 5 (Consent of licensee regarding request for correction trial)*XNUMX
Article 6 of the Antimonopoly Act - Application of the Antimonopoly Act to acts that are outwardly recognized as the exercise of patent rights but are not recognized as actually the exercise of rights *XNUMX

*5 Due to the XNUMX amendment, consent is no longer required in relation to non-exclusive licensees (consent is required for exclusive licensees).
*6 There are three types of acts to which the Antimonopoly Act applies: (XNUMX) private monopoly, (XNUMX) unfair trade restrictions, and (XNUMX) unfair trade methods.

The need to consider tax treaties

In licensing agreements with foreign companies, the burden of withholding tax on royalty payments becomes an issue. It is necessary to consider what kind of tax treaty has been concluded with the other party*7 (in many cases, a reduced tax rate of around XNUMX% is stipulated).

*7 Tax provisions, whether in treaties or domestic laws, generally cannot be changed by agreement of the contracting parties.

Governing law issues

The issue of governing law refers to which country's law should be applied in the event of a violation of a contract or other private law legal relationship that involves foreign elements (i.e., an international transaction). This is the problem. In contracts, the principle of party autonomy is recognized, which leaves the choice of applicable law to the parties.

Normally, Japanese law is considered to be the governing law, but when contracting with an overseas counterparty, the governing law may be the law of the country or state where the other party is located. In such cases, it is important to check whether the content of the contract is correct in terms of the applicable law stipulated therein, that is, whether there are any provisions that would be invalidated as violating the applicable law, or what would happen in the event of a breach of the contract. It is also necessary to confirm whether any legal issues may arise.
Our firm has affiliated agents in various countries, so we are sure to confirm this*8.
*8 In addition to our office fees, there will be local agent fees.

Contracts related to applicable intellectual property

Nondisclosure agreement
② Joint research and development agreement
Software development contract
4 Employee invention regulations,Work-for-hire regulations
joint application agreement
Patent/know-how license agreement
⑦ Software license agreement
⑧ Trademark/design license agreement
Copyright license agreement
Character usage license agreement
Patent transfer agreement
Trademark-Design rights transfer agreement
Copyright transfer agreement
⑭ Publishing rights setting/publication license agreement regarding copyright
Agreement regarding use of AI/data

Drafting and reviewing contracts at our patent office
Benefits of requesting

Solid knowledge of specialized technical field

In order to conclude a contract regarding technical content, it is essential to have an accurate understanding of the meaning of terms in specialized technical fields, and our office has many staff members with specialized knowledge in fields such as mechanics, chemistry, biology, physics, and medicine. I am enrolled.

 

Proposing contract terms based on strategy

An essential element in drafting a contract is "strategy." A contract represents a "mutual reading between the parties," and we believe that the various proposals we can make to advance negotiations with the other party in an advantageous manner are backed by many years of international experience. As a "Business Strategy Advisor" (registered trademark in Japan), we strive to propose contract terms based on strategy so that we can provide real results to our clients.

 

International contracts that span GLOBAL

At our patent office, more than half of the cases we handle are related to foreign countries, so we pay close attention to foreign systems and situations on a daily basis, and are able to handle international contracts that span not only Japan but also the GLOBAL. is.

 

Ability to handle multilingual contracts with our extensive translation staff

We also have translation staff (foreign staff and graduates of overseas universities) who are proficient in not only English, but also Chinese, Korean, French, and German.

 

Existence of Legal Strategy Department

Our firm has a Legal Strategy Department that handles intellectual property matters other than technical fields such as patents and utility models. We not only handle design and trademark applications, but also utilize our knowledge of civil law and civil procedure law to handle many cases related to intellectual property issues, including copyright law and unfair competition prevention law.

 

 

cost

Prices vary depending on the details of your request, so please contact us and we will give you a quote. We can also work within the amount you have suggested.

 

 

contract sample

If you would like a sample contract, please contact us via email.


<Related page>
IP advisory Intellectual property management consulting Intellectual property value evaluation M&A support office Technology transfer consultation room Brand Strategy Promotion Office Intellectual Property Contract Strategy Office Unfair competition consultation room

TOP