International Licensing Common Pitfalls MBITA – Green Trade Network Summit September 19, 2008 Rodney A. Alves MBITA – Green Trade Network Summit September 19, 2008 Rodney A. Alves

2 Points to Remember  Do not disclose without protection  IP Protection is Territorial  IP laws and procedures are different  International and regional protection  Watch out for IP deadlines  Verify and respect registered IP rights  Plan ahead: define issues and limits with partners  Do not disclose without protection  IP Protection is Territorial  IP laws and procedures are different  International and regional protection  Watch out for IP deadlines  Verify and respect registered IP rights  Plan ahead: define issues and limits with partners

3 Licensing Agreement  Language  Confidentiality  Special Situations  Quality Control  Developments / Upgrades  Royalties  Dispute and Resolution  Language  Confidentiality  Special Situations  Quality Control  Developments / Upgrades  Royalties  Dispute and Resolution

4 Language  Is English accepted in foreign countries?  Parties understand  Terms with different meanings  Business  Cultural  Legal  Local Laws  Local Courts  Side by Side languages  Which language prevails?  One set of signatures?  Is English accepted in foreign countries?  Parties understand  Terms with different meanings  Business  Cultural  Legal  Local Laws  Local Courts  Side by Side languages  Which language prevails?  One set of signatures?

5 Confidentiality  Secret  Who’s?  Technology  Revenues, clients, etc.  Data  Know-how  Publications  Literature/Manuals  Reports  Term  After termination  Secret  Who’s?  Technology  Revenues, clients, etc.  Data  Know-how  Publications  Literature/Manuals  Reports  Term  After termination

6 Special Situations  Exclusiveness  Enforceability  Mirror / Consideration  Territoriality  Limitation on growth  Sublicense  Conditions  Responsibility  Revenues  Non-Compete  Enforceability  Consideration  Exclusiveness  Enforceability  Mirror / Consideration  Territoriality  Limitation on growth  Sublicense  Conditions  Responsibility  Revenues  Non-Compete  Enforceability  Consideration

7 Quality Control  Responsibility  Who’s?  Technology  Revenues, clients, etc.  Technical Support  Conditions  Licensee  Third Parties  Structure  Costs  Responsibility  Who’s?  Technology  Revenues, clients, etc.  Technical Support  Conditions  Licensee  Third Parties  Structure  Costs

8 Developments / Upgrades  Responsibility for updates  Costs  Structure  Requirements  Ownership  Conditions  Registration  Rights  Limitations  Control  Responsibility for updates  Costs  Structure  Requirements  Ownership  Conditions  Registration  Rights  Limitations  Control

9 Royalties  Structure  Applicable percentage  Minimum volume  Guaranties  Payment  Remittance  Central Banks  Local Taxes  Structure  Applicable percentage  Minimum volume  Guaranties  Payment  Remittance  Central Banks  Local Taxes

10 Dispute Resolution  Law of the Agreement  Where the issues are likely to arise?  Local  Enforcement  Court choice  Enforcement  Convenience of the parties  Timing  Mediation and Arbitration  Local laws  Pros and cons  Publicity  Registration  Law of the Agreement  Where the issues are likely to arise?  Local  Enforcement  Court choice  Enforcement  Convenience of the parties  Timing  Mediation and Arbitration  Local laws  Pros and cons  Publicity  Registration

11 Points to Remember  Do not disclose without protection  IP Protection is Territorial  IP laws and procedures are different  International and regional protection  Watch out for IP deadlines  Verify and respect registered IP rights  Plan ahead: define issues and limits with partners  Know your partners  Get professional help  Do not disclose without protection  IP Protection is Territorial  IP laws and procedures are different  International and regional protection  Watch out for IP deadlines  Verify and respect registered IP rights  Plan ahead: define issues and limits with partners  Know your partners  Get professional help