It may be time to have a look.
Companies sign onto a lot of agreements – confidentiality, materials transfer, collaborations, contract research, contract manufacturing, clinical trials and the like. These agreements each come with obligations and restrictions. Are you keeping track?
Make time for an audit
Every company has its favorite template for agreements and so in accumulating agreements with different companies, the details vary, even if the overarching purpose is the same. Take for example confidentiality agreements. Some require all documents to be stamped “Confidential.” Others have a fail-safe that if a document or discussion isn’t initially labeled as confidential, you might have somewhere between 5-30 business days to designate the material as confidential. It’s important to keep track to make sure your proprietary information and trade secrets are kept safe.
Agreements vary in their term, Some are for one year, others for several years or the life of one or more patents. You will want to know when the agreement ends, whether or not it needs to be renewed and if there is an “automatic” process for such renewal. You may also be interested in the termination provisions, namely can the agreement be terminated, for what reasons and with what types of procedures. For instance, if you decide not to pursue a business relationship with company A, it may be best to terminate the agreement and follow the procedures to have company A return or destroy any proprietary documents and materials received from you.
Take an audit of agreements in place to date and their requirements. Then have a look at how the agreement is running in actuality. Are you compliant with the provisions? Is the other party? Assess whether any remedial measures would be beneficial to protect information, materials and collaborative work.
Keep a log
Agreements come and go. There are drafts, revisions, eventually a signed executed version and thereafter there may be amendments. Have a dedicated place for agreements. Separate the executed versions from the drafts so you have a clear view of the operative versions. Keep any amendments with the executed originals.
Have a table or other document or database that tracks the details of the agreements, such as the parties, key terms and obligations, and particularly what products or technology platforms within your company each agreement impacts.
Keep up with day-to-day requirements
Going forward have a system in place for following the agreed-upon procedures between the parties, such as labeling documents as confidential, complying with reporting obligations (e.g., for research progress or new inventions), and taking responsibility for filing for IP protection.
For agreements that involve the transmission of information, data or materials, put in place a mechanism that tracks what went to the other party, when and include the individuals sending and receiving information. As arduous as this may sound, it can be handy when disputes between the parties arise. One possible path is to have a point person for each agreement, ideally someone involved in the interaction, who can make note of the “to and fro” with the other party.
Find a dedicated space
Third party agreements often have restrictions on who can see the data and information. Cordoning off outside information can help prevent accidental integration of 3rd party IP into the company’s work. Additionally, it is fairly typical for agreements to mandate destruction and/or sequestration of the 3rd party proprietary information upon termination of the agreement. Having a dedicated space can make this task straight-forward. Additionally, a dedicated data area allows the company to regulate and monitor who has access. This too can help prevent unintentional mixing of company and 3rd party information.
A view for the long term
A closer look at the company’s agreements can provide perspective for longer term ramifications. For example, for agreements that mandate royalties or milestone payments, is this for all products or limited to a subset? Does the agreement conclude when the patents expire or does the shared know-how perpetuate the agreement (and its financial obligations) throughout the life of the product?
Another aspect to watch is the ownership of improvements. Take the instance where your company licenses a technology to make a component. In the course of working with the technology, you improve upon it, resulting in an improved manufacturing process as well as a new and improved component. Does the license address who owns the new process? And what about the new component, is it still covered by the initial license or do these changes take it outside the scope? Absent a mechanism to track and from time-to-time to review existing agreements, you might assume incorrectly that your improvement was covered by the agreement and miss an opportunity to develop your own IP. Or if you discover the improvement is covered, perhaps your research is best targeted at another facet outside the scope of the agreement.
Starting a system for tracking and monitoring agreements will likely entail some upfront work, but having a system will provide benefits and reduce headaches in the short and long term.
The content of this blog is for informational purposes only and does not offer legal advice. Circumstances are fact-specific and you should consult an attorney for legal advice concerning your individual issues.