Intellectual Property: Feedback
NDA
Table of Contents:
Definitions
Freedom to Use
Limits on Feedback Rights
Intellectual Property: Feedback
While more commonly found in agreements governing commercial transactions (see extensive discussion at the section called “Feedback”), terms relating to “feedback” may also be found in NDAs. Parties often provide customers and potential partners with confidential information in the form of products (both beta and pre-release/pre-market) for evaluation purposes. In such cases, the parties may agree that obtaining feedback regarding such products is a valuable activity and should be encouraged in furtherance of the primary purpose of the NDA.
In the following exemplar, authorized use of confidential information expressly includes providing such feedback:
Exemplar N14B-1
In the event that the Disclosing Party provides any computer software and/or hardware to the Receiving Party as Confidential Information under the terms of this Agreement, such computer software and/or hardware may only be used by the Receiving Party for evaluation and providing Feedback (as defined in Section X of this Agreement) to the Disclosing Party.
Definitions
Feedback generally covers a receiving party’s comments and suggestions regarding the owner/discloser’s confidential information. The following exemplars provide standard definitions of such feedback:
Exemplar N14B-2
A Recipient or its Affiliates may from time to time provide suggestions, comments, or other works or information to the Discloser or its Affiliates for use in connection with, or otherwise regarding, Discloser’s products, programs, systems or services, or other information provided by Discloser to Recipient for the purpose of enabling or improving Discloser’s products, programs, or services (“Feedback”).
Exemplar N14B-3
During the course of this Agreement, CONTRACTOR may provide or CLIENT may solicit CONTRACTOR’s input regarding CLIENT’s Software, products, services, business or technology plans, including, without limitation, comments or suggestions regarding the possible creation, modification, correction, improvement or enhancement of CLIENT Software, products and/or services, or input as to whether CONTRACTOR believes CLIENT’s development direction is consistent with their own business and IT needs, the technology marketplace in general, and the like (collectively “Feedback”).
Exemplar N14B-4
The Receiving Party may from time to time provide suggestions, comments or other feedback (“Feedback”) to the Disclosing Party with respect to Confidential Information provided originally by the Disclosing Party.
The following exemplar applies some specific parameters defining what constitutes feedback:
Exemplar N14B-5
Feedback which is provided by Customer to Company in connection with Company’s solutions disclosed under this Agreement shall (i) only be in writing, (ii) clearly marked as feedback, and (iii) duly signed by the Head of Research and Development of the Customer.
And in the following exemplars, the definition of feedback inherently excludes confidential information of the party providing the feedback:
Exemplar N14B-6
Customer may provide Company with suggestions, comments, or other feedback regarding Customer’s evaluation or use of Company’s Solution, including but not limited to suggested performance improvements to the Solution (“Feedback”); provided, however, that in no event shall Feedback include any Customer Confidential Information (as defined in the NDA).
Exemplar N14B-7
Customer may provide Contractor with suggestions, comments, or other feedback (collectively, “Feedback”) with respect to the Products. Feedback is voluntary. Contractor is not obligated to hold any Feedback in confidence. Contractor may use Feedback for any purpose without obligation of any kind. Nothing in this Agreement, or in the parties’ dealing arising out of or related to this Agreement, will restrict Contractor’s right to use, publish, or otherwise exploit Feedback, without compensating or crediting Customer or the individual providing such Feedback, except to the limited extent that such Feedback contains Customer Confidential Information. Notwithstanding the foregoing, Customer may not designate Feedback as its Confidential Information to the extent that such Feedback relates to Contractor’s Products or Services.
Freedom to Use
The parties may agree that the provision of feedback should not be required and that any feedback should be given voluntarily only. However, once given, such feedback should remain free for use by the receiver of such feedback without any conditions or restrictions:
Exemplar N14B-8
Both parties agree that all Feedback is and shall be given entirely voluntarily. Feedback shall not be deemed to be Confidential Information, and either party shall be free to use, disclose, reproduce, license or otherwise distribute, and exploit the Feedback as it sees fit, entirely without obligation or restriction of any kind on account of intellectual property rights or otherwise.
Exemplar N14B-9
Unless otherwise expressly agreed, all Feedback is and shall be given entirely voluntarily and neither party nor their respective Affiliates shall have any obligation to do so. In the event a Discloser does provide Feedback, then Recipient and Recipient’s Affiliates shall have and are hereby granted the right to use, disclose and otherwise exploit all such Feedback for any and all purposes, including, without limitation, incorporation and distribution as part of the programs, products or services of Recipient or Recipient’s Affiliates. Feedback, even if designated as Confidential Information of Discloser or its Affiliates, shall not create any confidentiality obligation for Recipient or Recipient’s Affiliates with respect to the Feedback.
Exemplar N14B-10
If Contractor provides any ideas regarding any Client product or service, including suggestions for changes or enhancements (collectively “Feedback”), Feedback may be used by Client without condition or restriction.
The following exemplars flesh out the “free use” aspect of feedback via an express and formal license grant:
Exemplar N14B-11
CONTRACTOR acknowledges and agrees that any information disclosed by CLIENT during discussions related to Feedback shall be considered CLIENT Confidential Information and shall be protected from disclosure in accordance with the terms of this Agreement. In order for CLIENT to utilize such Feedback, CONTRACTOR grants to CLIENT a non-exclusive, perpetual, irrevocable, worldwide, royalty-free license, with the right to sublicense to CLIENT’s licensees and customers, under all relevant CONTRACTOR intellectual property rights, to use, publish, and disclose such Feedback in any manner CLIENT chooses and to display, perform, copy, make, have made, use, sell, and otherwise dispose of CLIENT's and its sublicensee’s products or services embodying Feedback in any manner and via any media CLIENT chooses, without reference to the source. CLIENT shall be entitled to use Feedback for any purpose without restriction or remuneration of any kind with respect to CONTRACTOR and/or its representatives. CONTRACTOR acknowledges that the information related to CLIENT’s Software, products, services, business or technology plans, disclosed to it under this Agreement, is only intended as possible strategies, developments, and functionalities of the CLIENT products or services and is not intended to be binding upon CLIENT to any particular course of business, product strategy, and/or development.
Exemplar N14B-12
Except for any Feedback where Customer indicates that an intellectual property license is required to use the Feedback (either at the time of providing Feedback or within such period thereafter that Company is not materially prejudiced by the failure to make earlier disclosure), Customer shall grant Company a license to use the Feedback on a royalty-free, irrevocable and non-exclusive basis to develop, manufacture, make, have made, reproduce, have reproduced, modify, use, export/import, offer to sell and sell as part of Company’s technology, products or services. The use of the Feedback will not impose any confidentiality or other obligations on Company relating to the Feedback, however Company shall not disclose the source of such Feedback to third parties without the consent of Customer.
Exemplar N14B-13
This Agreement does NOT obligate Recipient to provide Discloser with comments or suggestions regarding Confidential Information. However, should Recipient provide Discloser with comments or suggestions for the modification, correction, improvement or enhancement of (a) the Confidential Information or (b) Discloser products or processes which may embody the Confidential Information, Recipient grants to Discloser a non-exclusive, irrevocable, worldwide, royalty-free license, with the right to sublicense, Discloser’s licensees and customers, under Recipient intellectual property rights, the rights to use and disclose such comments and suggestions in any manner Discloser chooses and to display, perform, copy, make, have made, use, sell, and otherwise dispose of Discloser's and its sublicensee’s products embodying such comments and suggestions in any manner and via any media Discloser chooses, without reference to the source.
By contrast, in the following example, outright ownership (as opposed to a license) is accorded by the provider of the feedback to the discloser of the confidential information:
Exemplar N14B-14
Company shall own all Feedback provided by Customer and Customer shall assign to Company all right, title and interest thereto. Customer and its officers, employees and independent contractors shall cooperate fully with Company with respect to signing further documents and doing such other reasonably requested acts to confirm that Company owns the Feedback, and to enable Company to register or protect any associated intellectual property rights and/or confidential information.
Limits on Feedback Rights
The following exemplars clarify and limit the scope of any license to use feedback, including an express exclusion against using any intellectual property rights of the party providing the feedback:
Exemplar N14B-15
Feedback may be used by Company to improve or enhance its Solution subject to the following restrictions, namely Feedback will be provided:
(i) on a non-exclusive basis; and
(ii) “as is” without warranty of any kind, whether express, implied, statutory or otherwise (including but not limited to, any warranty about the ability of Company to use the Feedback or whether the Feedback is subject to third party licenses (including any open sources)) and may contain errors or omissions; and
(iii) without a transfer of title of the Customer’s intellectual property rights; and
(iv) without a license to use the Customer’s patents or patentable inventions.
Company shall not be entitled to assert any patent rights over any Feedback. For the avoidance of doubt, the granting of any license relating to any of Customer’s patents or patentable inventions included or embodied in the Feedback shall be subject to good faith negotiations between the parties.
Exemplar N14B-16
Customer may provide Company with suggestions, comments, or other feedback regarding Customer’s evaluation or use of the Solution, including but not limited to suggested performance improvements to the Solution (“Feedback”). Customer agrees that any Feedback shall be voluntarily and Customer hereby grants Company the right to use such Feedback to improve the Solution, however, Customer is not granting Company any rights or licenses under Customer’s patents or patent applications. Except as expressly set out herein, no intellectual property right of either party is transferred or licensed under this Agreement.
Exemplar N14B-17
Customer may provide Company with suggestions, comments, or other feedback regarding Customer’s evaluation or use of the Solution, including but not limited to suggested performance improvements to the Solution (“Feedback”). Customer agrees that any Feedback shall be voluntarily given and that Feedback will be granted to Company in the form of a non-exclusive, unlimited, perpetual, and royalty-free license. Except as expressly set out herein, no intellectual property right of either party is transferred or licensed under this Agreement.
Exemplar N14B-18
Any Feedback shall be voluntarily given and Customer grants Company a non-exclusive, perpetual, irrevocable, worldwide, royalty-free license to use Feedback in the development and commercialization of the Solution. Except as expressly set out herein, no intellectual property right of either party is transferred or licensed under this Agreement.