Intellectual Property: Ownership of Pre-Existing IP and Derivatives Thereof
NDA
Table of Contents:
No Transfer for IP Rights
Derivatives
Intellectual Property: Ownership of Pre-Existing IP and Derivatives Thereof
An NDA should have terms clearly protecting a disclosing party’s ownership of rights relating to intellectual property embedded or embodied in disclosed information. To that end, an NDA often includes terms where the disclosing party asserts ownership and reserves rights over such intellectual property.
No Transfer of IP Rights
In particular, as demonstrated in the following exemplars, other than a limited right to use disclosed information as permitted under the NDA, no license or transfer of intellectual property rights is made by the act of disclosure:
Exemplar N14E-1
No licenses or rights under any patent, copyright, trademark, or trade secret are granted or are to be implied by this Agreement. Neither party is obligated under this Agreement to purchase from or provide to the other party any service or product.
Exemplar N14E-2
All Confidential Information and any Derivatives thereof, unless otherwise specified in writing remains the property of the Disclosing Party. Receiving Party acquires no rights or licenses in the intellectual property of Disclosing Party including but not limited to, patents, trademarks, copyrights or service marks under this Agreement or through any disclosure hereunder, except the limited right to use such Confidential Information in accordance with this Agreement.
Exemplar N14E-3
Discloser’s Confidential Information will remain the property of the discloser. This Agreement and the disclosure of discloser’s Confidential Information to the recipient hereunder (a) creates only a limited and revocable license to use such information solely for the Purpose; (b) will not be construed as granting or conferring any express or implied right, license, or authority in or to discloser’s Confidential Information, except the limited right to use Confidential Information as authorized by this Agreement; (c) will not grant or create any express or implied right, license, conveyance, or authority in or toany of discloser’s patents, copyrights, trademarks, trade secret, or other intellectual property rights.
Exemplar N14E-4
All of the Disclosing Party’s Confidential Information shall remain the sole property of the Disclosing Party. The Disclosing Party’s disclosure of Confidential Information under this Agreement is not a license to the Receiving Party under any trademark, patent, copyright, mask work, protection right or any other intellectual property right.
Derivatives
In addition to reserving rights to existing IP embodied in the disclosed information, the parties should also protect “derivatives” of such IP. The following exemplars define the concept of “derivatives”:
Exemplar N14E-5
“Derivatives” shall mean: (i) for copyrightable or copyrighted material, any translation, abridgement, revision or other form in which an existing work may be recast, transformed or adapted; (ii) for patentable or patented material, any improvement thereon; and (iii) for material which is protected by trade secret, any new material derived from such existing trade secret material, including new material which may be protected by copyright, patent and/or trade secret.
Exemplar N14E-6
For purposes of this Agreement, “Derivatives” means (i) for copyrightable or copyrighted material, any translation, abridgement, revision or other form in which an existing work may be recast, transformed or adapted; (ii) for patentable or patented material, any improvement thereon; and (iii) for material which is protected by trade secret, any new material derived from such existing trade secret material, including new material which may be protected under copyright, patent and/or trade secret laws.
Once the term “derivatives” is properly defined, the owner/discloser may then claim ownership of any derivatives of disclosed intellectual property:
Exemplar N14E-7
Each party shall retain ownership of all Confidential Information and intellectual property it had prior to commencement of the discussions and evaluation referred to in this Agreement, but Company shall own exclusively all rights in (i) ideas, inventions, works of authorship, strategies, plans, and data, created in or resulting from discussions between Company and Customer, and/or (ii) Derivatives that are made based on or using the Company’s Confidential Information, including but not limited to all patent rights, copyrights, moral rights, rights in proprietary information, database rights, trademark rights, and other intellectual property rights, and Customer will execute assignments as necessary to achieve that result. Nothing in this Agreement shall be deemed to grant a license directly or by implication, estoppel, or otherwise, under any intellectual property right related to the Confidential Information, although the parties may provide for such a license in an express written agreement.