In a recent In-House Connect webinar titled “Navigating IP Clauses in Licensing, Distributor, and Reseller Agreements,” Dave Stevens from Stevens Law Group shared essential strategies for managing intellectual property (IP) clauses. The discussion offered valuable insights for in-house counsel on how to protect and optimize their company’s IP assets when navigating complex agreements.
Top 5 Takeaways for In-House Counsel:
1. Maintaining Control Over IP
To safeguard IP assets, maintaining control is crucial—especially in scenarios involving bundled products or local production. Without well-structured agreements, IP could be diluted or compromised when working with resellers or distributors. Clearly outlining the scope of IP usage ensures that your company retains ownership and preserves its competitive advantage.
2. Mitigating IP Risks in Foreign Markets
Expanding into international markets introduces significant risks in IP protection. Proactively registering trademarks and service marks in each jurisdiction is critical. In regions like the UAE, where IP enforcement is particularly stringent, securing patents and trademarks provides leverage against counterfeit goods and protects your company’s interests. Ensuring compliance with local regulatory approvals is vital to avoid legal complications.
3. Trademark and Brand Control
Effective trademark management prevents resellers or distributors from gaining ownership or control of your brand. Registering trademarks independently and restricting their usage within distribution agreements can help retain brand identity and strengthen your negotiating position. Losing control over trademarks can lead to rebranding issues or reduced visibility in key markets, underscoring the importance of protecting your brand proactively.
4. Structuring Indemnities for IP Infringement
Limiting indemnities to elements directly produced and controlled by your company is a key strategy to reduce liability in IP infringement claims. This approach helps manage risk exposure and ensures that you handle defense only for the IP you own. Structuring indemnity clauses to cover only your direct products can protect you from liability related to third-party components or products bundled with yours.
5. Consistency and Clear Documentation
Consistency across agreements—whether with customers, resellers, or distributors—is essential to minimizing risks, particularly when dealing with varying jurisdictional laws. Ensuring clear, consistent documentation of IP clauses helps maintain security over trade secrets and sensitive information. Controlled disclosure within these agreements protects vital IP assets and ensures alignment across business relationships.
The webinar highlighted the intricate balance between protecting IP assets and fostering collaborative business relationships through licensing, distribution, and reseller agreements. By focusing on maintaining control over IP, addressing foreign market challenges, safeguarding trademarks, structuring indemnities, and ensuring consistency in agreements, in-house counsel can effectively protect their company’s valuable IP while enabling business growth.
Missed The Webinar? You can watch it now via IHC On-Demand!
