Technology Law Insights by Ray Millien

The phrase “for the avoidance of doubt” must be a Microsoft Word shortcut that comes standard in some legal IT package. Why do we say that? Well, we recently received an IP licensing agreement from an attorney working at a large law firm located in a large city, serving a large client, and presumably charging a large hourly fee. It seemed as though every 50th word in the agreement was “for the avoidance of doubt.” Now, this is not a personal attack on this particular attorney or law firm. We have seen the phrase used way too often and do not understand why. Perhaps this is just a phrase that makes agreements sound more  legalese  or maybe the attorneys in question think it makes certain provisions in the agreement more “airtight?” Nonetheless, we ask all of you to please stop! Defining the Terms Let us start by defining what the phrase means in a literal sense. Not surprisingly,  Black’s Law Dictionary  does not define the phrase “avoidance of doubt” in its entirety....

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It continually amazes me that many business folks who   negotiate tons of IP license agreements , fail to understand the difference between covenants, representations, and warranties that are “standard” in many such agreements.  Well, that is not too surprising.  What is very surprising, however, is that many of their lawyers fail to appreciate the differences as well!  Many think the terms are synonymous and thus use them interchangeably. They are not.  So, for those of you tired of faking the funk, here is some (either fresh or refresher)   Contracts 101! A  covenant  is a promise by a party by which it pledges that something is either done, will be done or shall not be done. Example 1 : “Licensee shall pay Licensor a flat royalty based on 2.5% of Gross Revenues received from the sale of Licensed Products.” Example 2 : “Company A hereby covenants not to sue Company B under any patent listed in Exhibit A for infringement based upon any act b...

In today’s technological environment, collaboration between different entities is commonplace, if not inevitable. That is, we are deep into the age of “ Open Innovation ” where companies use external ideas and technologies to accelerate their internal innovation and paths to market. Long gone are the days of “ Closed Innovation ” where companies suffered from NIH (“Not Invented Here”) syndrome and relied solely on their own personnel to develop new products and services. Consequently, intellectual property (IP) law practitioners often find themselves drafting, reviewing and negotiating collaboration-type agreements. Invariably, the issue of who owns any resultant IP arises as this is usually the most contested issue in pre-collaboration discussions. Unfortunately, too often the answer is “we both do!” It seems the since-kindergarten, ingrained notion of sharing supersedes our B.S., M.S., J.D., Ph.D. and/or M.B.A. training in this respect! Pressures to “get the deal done” by our busi...

This is an excerpt from an article by Christopher George and myself appearing in the American Bar Association IP Section's Landslide magazine (July/Aug. 2015) pp. 34-41.   Follow Link for Full Article!   Introduction Over the last decade, there has been a movement among the software developer community to employ some form of “agile development” rather than the traditional software development methodology. The belief is that these agile methodologies lead to higher quality software and faster development cycles. More recently, the implementation of agile software development has transitioned not only from small startups to large companies, but also from enterprises developing noncritical, consumer apps to those developing software for medical, aviation, military, and financial systems, where the presence of errors pose high human or economic risk. With these transitions, intellectual property (IP) law practitioners must adopt their traditional lawy...