1. NDA Fase de Acercamiento

8/6/2019 1. NDA Fase de Acercamiento

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www.contratoseningles.com


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INTERNATIONAL

CONTRACTS

Steps to aDefinitive

Agreement


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STEPS TO A FINAL AGREEMENTSTEPS TO A FINAL AGREEMENT

y Nondisclosure Agreement

y Term Sheet

y

Letter of Intenty Memorandum of Understanding

y Final Contract or

y

Definitive Agreement or Execution Copyy Which of these is a contract?

Partially binding clauses


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El Acuerdo de Confidencialidad

y Por qu son necesarios los Acuerdos de

Confidencialidad si hay regulacin legal al

respecto?

y Cmo podemos identificar bienesIntangibles a proteger en el acuerdo?

y Es necesario implantar medidas de

seguridad slidas para la organizacin?y Puesta en prctica medidas de

cumplimiento y seguimiento


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NONDISCLOSURE AGREEMENTNONDISCLOSURE AGREEMENT

y NDA or CDA

y What is its purpose?

y

What kind of information?y Proprietary information

technical or commercial

confidential

y But dont we already have legal protection

for this?

RR2


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Slide 5

RR2 Raissa Rouse, 11/29/2006


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Intellectual PropertyIntellectual Propertyy Public registration of intellectual

property:

Copyrights

x original works of authorship Trademarks or service marksx protect words, names, symbols, sounds, or colors

that indicate the source of the goods

or Patent rightsx inventions and processes

in order to secure exclusive use for a fixed period oftime


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Secrecy AgreementsSecrecy Agreementsy Information that may not be

protected by IP law but have value tothe company?

x TRADE SECRETS how defined?y Anything with independent economic

value derived from the fact that it isnot widely known or easily obtained

y Trade secrets need never be revealedto anyone.

y FUTURE copyrights or patents are

not legally protected


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Confidentiality AgreementConfidentiality Agreementy INTERIM FORM of protection

y For whom?

y

provided to the business people sofeel free to have discussions w/ocompromising the company

y professional discussion and

collaborationy as well as commercialization

efforts.


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moremore permanentpermanent protection protection

Public registration or

License Agreement

Definitive Agreement isentered into with its

own confidentialityclause


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DRAFTING ELEMENTSDRAFTING ELEMENTS

y Long form versus Short form

y Mutual v. Non-Mutual Cf. unilateral v. bilateral contract

y Bilateral Contract = promise for a promise

Enforceable in a court of law

y

Unilateral contract Enforceable upon performance

Ex. Listing agreement for the sale of realproperty


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11.. The parties to a NDAThe parties to a NDA

y Identify the parties who is bound?

y PBC Clauses 1 and 9

y This Agreement shall be binding upon theparties and their respective affiliates and

Representatives

y COSYSTEMS preambley and its wholly owned subsidiaries


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Other examples .Other examples .

y As used herein, the term shall mean

any and all financial, technical,

commercial or other information

concerning the business and affairs ofCorporation or its holding company, its

subsidiaries or its affiliates

(collectively, the "Company"), that hasbeen or may hereafter be provided or

shown to you


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Parent CompanyParent Company

yWalt Disney Corporation

40% of the HistoryChannel

80% stake in ESPN100% Disney Channel


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Degree of OwnershipDegree of Ownership

y Holding company

y Parent Company

y Wholly owned subsidiary (100%)y Subsidiary (majority shareholder

50%+)

What about corporate subsidiary? Include LLC?

y Affiliate or associate (minority stake

>50%)


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2.2. Who has access to confidentialWho has access to confidential

material?material?

y PBC:And that prior to being given access [] shall be

informed of the confidential nature of suchEvaluation Material and agree to be bound by the

terms of this Agreement. (Clause 1 and see 2(b))y COSYSTEMS:

Clause 4: need to have access Employment NDAs

yStandard: employeeswitha need to know


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3.3. PURPOSEPURPOSE what can I do with thewhat can I do with the

CI?CI?

y no use clauses

y PBC clause 2(a);

y Except for purpose evaluating possible

transactiony Cosystems 3;

y Purpose:

y fill in blank

x Destinacin???

yStandard: forpurposes ofevaluating transaction


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4.4. SCOPESCOPE how shall I care forhow shall I care for

CI?CI?y Scope: the strength of NDA degree of care

PB

C: clause1

x imperative material remainconfidential

x

See clause 4 Cosystems: Clause 4

xemployment NDAs to assure

against unauthorized use


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Standard language:Standard language:

yRecipient should agree to

protectthe confidential

information in a mannersimilarto the way the

R

ecipient protects its ownconfidential information


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55.. DEFINITION OF CONFIDENTIALDEFINITION OF CONFIDENTIAL

INFORMATIONINFORMATIONy Written or tangible form:

provided that information disclosed by thedisclosing party (Disclosing Party) in written orother tangible form will be considered Confidential

Information by the receiving party (ReceivingParty) only if such information is conspicuouslydesignated as Confidential, Proprietary or asimilar legend.

y Oral disclosure:

Information disclosed orally shall only beconsidered Confidential Information if:(i) identified as confidential, proprietary or the likeat the time of disclosure, and (ii) confirmed in

writing within thirty (30) days of disclosure.


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Definition contd.Definition contd.

y See PBC where defined? Evaluation Material is defined in the Recitals!

y More standard:As used in thisAgreement,the term"Company Information" meansall information furnished by theCompany to the undersigned,and all further informationwhich is based on orderivedfrom such information,otherthan (a) [exclusions follow]


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due to its nature due to its nature

y Confidential Information, as used at all places inthis Agreement, shall mean the terms of this Agreementand any other information disclosed by one party to theother party that is either designated as confidential orproprietary or that, due to its nature and/or the

circumstances in which it is disclosed should beconsidered confidential. It shall include, but not belimited to, any and all methods, processes, strategies,equipment, plans, formulas, software, programs, sales andmarketing information, technical information, financialinformation, data, know-how, documentation and other

information disclosed after the date of this agreement,whether disclosed visually, orally, or in writing, whetheror not tangibly recorded.


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Problem?Problem?y In the course of evaluating the Transaction, and if consummated,

performing in accordance with the terms to be negotiated for theTransaction, the Recipient will have access to, among other things,certain of the Owner's confidential and proprietary businessdocuments and information, including, but not limited to, marketingdata, financial information, sources of supply, technologies, products,

know-how, product specifications, trade secrets, current and futureproduct marketing plans, current and future research anddevelopment, and product characteristics and specifications, all ofwhich are or may be deemed to be confidential and proprietaryand are owned and used by or are exclusively licensed to theOwner. Such information shall be referred to hereinafter as"Proprietary Information" and shall also include any and all other

confidential and proprietary information relating to the businessconducted by the Owner; the terms or details of the Transaction,the fact that the parties have entered into discussions regarding theTransaction, and the details of such discussions;


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66.. EXCLUSIONSEXCLUSIONS

y PBC Cl. 5 and CoSystems Cl. 5y Available to the publicy Available to the recipienty

Independently developed See clause 5 (iv) Cosystems The Discloser may require a certain

level of proofbefore such information

is considered non-confidential See clause 7 (end) Why not draft together or make

reference?


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7.7. As is As is

y PROPRIETARY INFORMATION ISPROVIDED AS IS. NO WARRANTIESARE MADE BY EITHER PARTY. THEOWNER ACCEPTS NO RESPONSIBILITY

FOR ANY EXPENSES, LOSSES ORACTIONS INCURRED OR UNDERTAKENBY RECIPIENT AS A RESULT OFRECIPIENTS USE OF PROPRIETARYINFORMATION.

y Confidential Information may be preliminaryor incomplete and relate to products underdevelopment or planned for development.


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CoSystemsCoSystems

y 9. DISCLAIMER. CONFIDENTIALINFORMATION IS PROVIDED AS IS WITH ALLFAULTS. IN NO EVENT SHALL THE DISCLOSINGPARTY BE LIABLE FOR THE ACCURACY OR

COMPLETENESS OF THE CONFIDENTIALINFORMATION.

y None of the Confidential Information disclosed bythe parties constitutes any representation, warranty,

assurance, guarantee or inducement by either partyto the other with respect to the infringement oftrademarks, patents, copyrights, any right of privacy,or any rights of third persons.


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Purpose of these disclaimers?Purpose of these disclaimers?

As is magic words x Representations and warranties

Fraud in the inducement claimsx cf. Vicio en el consentimiento

Misrepresentation claims

Both are extra-contractual remedies awardingdamages beyond contract damages

Cf. culpa in contrahendo doctrine under civil law

Should use these clauses on businesspresentations!


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Intellectual PropertyIntellectual Property

y Recipient acquires no intellectual property rights underthis Agreement except the limited rights necessary toevaluate the Transaction and to perform thereunder ifthe Transaction is consummated.

y

But see CoSystems 7 exception:y Further, subject to Section 8, the residuals resulting from

access to or work with such Confidential Information shallnot be subject to the confidentiality obligations contained inthis Agreement. The term residuals means information in

non-tangible form, which may be retained by persons whohave had access to the Confidential Information, includingideas, concepts, know-how or techniques contained therein.Neither party shall have any obligation to limit or restrict theassignment of such persons or to pay royalties for any work

resulting from the use of residuals.


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8.8. TERMTERM cf. NDAscf. NDAs

y Long enough to protect interest of

disclosing party

y Not unduly burden recipient

y Indefinite or perpetual term upheld?

Trade secrets

y Return or destruction of material

electronic software cleaning programs and allcopies of Confidential Information shall be

purged from the recipients eleltronic or

magnetice media or storage devicess -

y


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INJUNCTIVE RELIEFINJUNCTIVE RELIEF --see clause 8 ofsee clause 8 of

PBCPBCy Equitable remedy

Legal remedy what is usual contract remedy?

money damages - insufficient

y Extraordinary relief Ex parte - inaudita parte (from Latin: inaudita

altera pars)

Prevent irreparable injury

Temporary restraining order (TRO)

y Waive posting bond or other securityy Specific performance:

fulfillment of agreement


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OTHER PROVISIONSOTHER PROVISIONS

y Choice of Law

y Forum selection clause Forum non conveniens

y Severabilityy No License

y Entire Agreement

Check the definitive agreement What about Expiration or Termination?


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Summary:Summary:

y 1. The parties

y 2. Access to confidential material

y 3. Purpose

y 4. Scope

y 5. Definition of confidential information

y 6. Exclusions

y 7. Disclaimers

y 8. Term


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Breach of clause 7 of theBreach of clause 7 of the

confidentialityconfidentiality agreementagreementy That no approach or contact direct or indirect in

connection with or during our discussions or whilst

any confidential information remains in the

possession or under the control of any relevantperson shall be initiated, accepted or made by or on

behalf of any relevant person to or with any

employee, client or supplier of yours or any

government body or regulatory or other authority orto or with any other person who to our knowledge

has any actual prospective connection with you

without your prior written consent.


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CPM v Ricoh 2010CPM v Ricoh 2010 EWHC 1743EWHC 1743

((ChCh))y Ricoh must not contact any CMP client

or company with a "prospective

connection" with it without CMP's

permission.y Ricoh chose to submit a bid without CMP.

y the agreement was so widely framed that

it broke EU rules on restriction of trade,as contained in the Treaty on the

Functioning of the European Union


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Holding company

Subsidiaries

Affiliates

Representatives


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RASSA ROUSE, ESQ.

[email protected] INSCRITACOLEGIO ABOGADOS SEVILLA(2010)

SOLICITOR INENGLAND AND WALES (2009)

ATTORNEY AT LAWFLORIDA(1995)

COUNSELOR AT LAWLOUISIANA(1989)

PROCTOR INADMIRALTY(1988)

Business Legal Advice: contratacin internacional

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