Unlock Digital Signature Legitimateness for Business Partnership Agreement in Mexico

How to eSign a document: digital signature legitimateness for Business partnership agreement in Mexico

[Applause] good afternoon thank you for joining me here in our new video suite at mice and solicitors for this webinar on collaboration agreements yesterday i'm a little bit of a guinea pig so fingers crossed we don't have any technical issues i'm carla murray i'm a commercial partner in the coco department here at myerson i draft a variety of commercial agreements and specialise in the tech and creative sectors so today we're going to have a look at what collaboration agreements are some of the different types of collaboration agreements you may come across why parties may have a collaboration agreement and also some of the key provisions to include in a collaboration agreement the webinars are set to take about 30 minutes um so if you do have any questions please feel free to drop them in the comments box and we'll respond to them after the webinar so before the the video suite was operational here at myerson i was sat home thinking okay where am i going to do my presentation from and then it dawned on me my kitchen and they may think why choose your kitchen well i looked at the definition of what a collaboration is and it's a process where two or more people or organizations work together to complete a task or project and it got me thinking because as a family all of our collaborations mainly take place in our kitchen it's where we come together to eat to cook and then there's the madness of making breakfast to pack lunches and getting the kids out of school in the morning all of which focuses on the kitchen and a collaboration therefore can occur in both a domestic and a business environment but they can also come in different structures so you can have corporate collaborations now today we are looking at commercial collaboration agreements but i just wanted to touch on corporate collaborations which can come in the guise of joint venture companies or partnerships or specific corporate vehicles and entities that are set up for a particular project corporate collaborations are outside the scope of this webinar but it is something we're going to do a webinar on later in the year so looking at um commercial collaboration agreements or cooperation agreements in its simplest form is basically an agreement pursuant to which two parties agree to collaborate and that may be on a project a development and it can be a written arrangement or a verbal arrangement so looking at the types of collaboration agreement nda is in the simplest form of a collaboration agreement they involve the sharing of confidential information and know-how for a particular purpose the parties work together using that information to consider for example if there's a project that's viable and then their intention may be to enter into a more detailed agreement once they've decided and assessed whether the project's viable i also wanted to touch on memorandums of understanding not because they're a collaboration agreement but merely because they're a precursor to a collaboration agreement and they can set out general points that parties have agreed principles for a particular project and they may contain basic information on roles and responsibilities and they'll be stated as non-binding now problems can arise with mousse if parties then go on to fulfill their obligations without for example entering into a further more formal agreement at a later date because you can end up with this partially written partially unwritten binding arrangement in place another area that may be seen as a collaboration is intellectual property licensing particularly if iprs are licensed for a particular purpose to allow parties to evaluate and consider information and look at possibilities for products they can be used to to allow a party to exploit a particular product or they can sit along with other agreements for example more detailed collaboration agreements or they can be contained in the terms of a collaboration agreement so what we're going to look at today are full collaboration agreements or commercial joint venture documents and these are detailed contractual agreements that set out the precise detail and the purpose of the collaboration and this is what we're going to consider further today some examples of these could be research and development for academic research that's where parties contemplate collaborating on a particular research project and will be sharing knowledge and results which they may then use independently to develop product sub processes you can also have research and development collaboration agreements to develop for example a new software or a product that may have application which one party can go and exploit commercially you can also have sector-specific collaboration arrangements so in the pharmaceutical sector you can have drug trials and clinical research agreements and there's also biolife sciences that have particular collaboration arrangements in place so the thing i wanted to sort of think about is why have a written agreement well it brings us back to my kitchen analogy because as within a kitchen everyone needs to know what their job is what their role is to avoid accidents and bumping into each other burning things and quite literally having to put a fire out and the commercial context is the same the hope at the outset of a project is that it proceeds without a problem and that the parties will do exactly what they say they're going to but without explicitly dealing with these matters you're just leaving it to chance and potentially exposing yourself to risk of a major issue at a later date so having clear responsibilities and obligations on the parties at the outset does set the party's relationship off on the right foot and as i've mentioned you know memorandums of understanding can create binding legal obligations even if they state the exact opposite because the danger is if the parties don't intend to create contractually binding terms but do perform their some of their obligations that may be set out in a memorandum of understanding then that's how you can create this legal contract coming into fruition but the difficulty with the mou is because that's not the intention when the parties enter into it it won't necessarily cover all of the provisions that you would expect a collaboration agreement to cover and it might not appropriately manage the risk or the exposure of the parties and in particular it might not adequately deal with intellectual property rights and their ownership so that brings us on to what principal provisions you should cover off in a collaboration agreement now the main parts of a collaboration agreement are dictated by the type of project that the agreement is intended to cater for the specific details of the project tend not to be legal terms so can be covered off in a schedule but there will be certain provisions that are generally covered in most collaboration agreements irrespective of what they're for so it's these general obligations that i wanted to take a bit of a closer look at so the first thing to really think about is who are the parties to the agreement who's going to be entering into it um it's always important to clearly set out the parties and that includes their company name and number because over time a company name can change but its number can't so that's a clear way of being ident able to identify the parties to the agreement and other things to think about is if a particular party is a member of a group structure so you need to think about which entity within that group structure should be entering into the agreement and whether that entity is entering into it on its own behalf or on behalf of the other group companies you need to think about the financial standing of the parties do they have the finance to comply with their obligations and see the collaboration through to fruition and do they also own the the rights that they're purporting to so do they own the intellectual property rights do they own the know-how that they need to be bringing to the collaboration also you need to think will there only be two parties for the agreement because it's not uncommon for a collaboration agreement to have more than two parties to it so just wanted to have a look at some of these obligations they should be clear and precise and there are general mutual obligations that you tend to see covered off so there'll be an obligation on the parties to appoint a project manager who'll have the authority to buy into the parties on all matters relating to the project but you should also think about whether there are any other key individuals that need to be referenced in the agreement and whether any restrictions should apply to those individuals for example that they can't be changed without the other party's consent now this is important because there could be a cost associated with getting that individual up to speed with the project and it's also important if the particular individual has specialist knowledge or expertise and therefore you want them to be involved in the project because it may not be so easy to have them replaced and that also replacing that individual may cause delays to the project it's a good point to include an obligation on the parties to act in good faith and in a timely manner this avoids delays and key milestones for example being missed and there's normally an obligation on the parties to make sure they provide each other with required information access to premises or facilities so for example if it's a scientific collaboration you may need access to laboratories or specialist equipment so that you can fulfill your obligations under the agreement and it's better to have this explicitly set out at the start in the in the document for example if you need dedicated times to access the laboratory or to access the equipment rather than just leaving it to translate it on the line we also tend to see obligations on parties to ensure that their employees and other third parties cooperate with um other members of the collaboration and that they attend and participate in governance meetings and then there'll be a general obligation to comply with applicable relevant laws and regulations as part of the collaboration an important thing to know is what you want to do is try and avoid an established a partnership being established you need to avoid creating one by the actions or the words of the agreement and it needs to be clear that the parties basically are in control of their own business operations so whilst they may be collaborating on a particular project they still have that autonomy and how their own businesses run and that they're not entering into this as a as a partnership joint venture structure um that has that control over their business operations that doesn't mean to say that you can't require consent of another party to be given for particular changes or decisions to be made and these can be done by a committee you're just simply avoiding the project as a whole being under a joint executive control as i say it's a good idea to establish a governance committee this is what then coordinate coordinates the parties working together it provides a forum for discussions around the project whether that's time scales and key milestone dates progression members of the committee are appointed by the parties and the the committee may have power to make decisions relating to the project tying in with that are change control provisions and change control clauses help manage change requests and change requests are normally given by way of a notice which sets out the change being requested any consequences that change may have for example to time scales key dates personnel or deliverables or any charges that are payable under the agreement and the discussions relating to the change request can occur as i say at a governance meeting but the important thing to note about a change request is that the parties aren't obliged to agree to the changes so if they don't agree to them what happens is the agreement will just simply continue as it was before the request was made another thing to think about when entering into a collaboration agreement is the costs so costs can come in a number of different guises they'll obviously be legal costs associated with negotiating and entering into the agreement at the outset you need to think about if the parties are going to bear their own costs for this or if a contribution is being made by one party to another party's costs and tying into that is the cost associated with the parties in complying with their obligations under the agreement again will they bear their own costs for this or is one party making a financial contribution if a party is being um required to make a financial contribution to the collaboration then you need to think about how is that financial contribution to be calculated is it going to be done on a time and materials basis or is it a fixed contribution and tying into that is what impact changes to the project or delays to the project may have on the costs and how that risk and that additional cost may be shared between the parties who's going to bear that burden of that and increased cost as i say this can be covered often catered for in change control so the parties can agree and discuss how the the costs are to be apportioned and there's also ongoing costs that are likely to occur so for example exploitation of a product taking it to market tying into that maybe application fees you may have patent applications there may be trademark applications or design my applications and you need to think about who's going to pay the cost of those together with an obligation on the parties to make payment and you need to think about what's the consequences if a party fails to make payment or delays in making a payment normally with payment obligations there would be a right to terminate if another party was in breach but you need to consider is that in the party's interests actually bringing the collaboration to an end or is a more appropriate remedy the right to be able to set off some stew or charge interest so some of the sort of one of the key obligations in the agreement and provisions to include in a collaboration agreement is the ip provisions and you need to think about ownership of existing intellectual property rights because it's likely that there'll be some background ip that's already in existence and maybe one of the parties is bringing that to the collaboration or both parties could have intellectual property rights that they're going to share as part of the collaboration and allow the other party to use therefore you need to ensure that this in these intellectual property rights are protected and that own ownership of those rights doesn't inadvertently transfer to another party and that it remains vested in the originating party there can also be resulting intellectual property rights and often at the outset it's seen as as a good idea to um have this as joint ownership any resulting ip that's created that may seem fair and reasonable but it does raise the potential for disputes later at a later date and so it's always good to think about can there be individual ownership can you ascertain who's created a particular intellectual property right and should that entity own those intellectual property rights tying into that is what the future licensing requirements of the parties may if one party is going to be solely responsible for exploiting the particular product in a market then it may need to own the intellectual property rights in order to be able to do that and the other party may simply just need a license to use the ip that's created that could be results in some research or information and they just need to be able to use it for a restricted purpose so it's possible if it is possible to distinguish between the particular intellectual property rights that are created and ascertain ownership individually then it is always a good idea to do that um if there may be some patents that are being produced then you also might want to include provisions as to who's going to make the application as we've said if they fail to make the application you may want to right to step in and take over ownership of that and make the application um on your own behalf so that's always an option to to have included as well the main thing though is to just avoid silence because unless you specifically deal with intellectual property rights then you're relying on the position under the copyright designs and patent act and that tends to be that the intellectual property rights will vest in the originating parties another thing to be mindful of is if there are any third parties that are going to be involved in the collaboration and so if for example one of the parties to the collaboration is outsourcing a particular development part and then you need to ensure that they have arrangements in place with that third party to ensure that again if any intellectual property rights are created that they are assigned over and vest with the correct entity to allow the collaboration to continue as i say tying in with that is is licensing and you may have a to include licensing rights to the background ip to allow the other party the right to use that intellectual property not only that you may need to widen that license to allow them to modify adapt and create derivatives from it if that's what's needed for the purpose of the project the other thing to think about is the resulting ip and how that's to be dealt with in terms of licensing because that may include some of the background ip so you need that ongoing license of the background ip to be able to use it in the for the new product and with the developed ip as well that can also have a royalties payment attached to it and restrictions on use so all of this needs to be catered for in the agreement so an example may be a research and development project with an academic entity the academic institute may want to be able to make use of the learning and the results and the output generated by the research program and use it within streams within the university and wider applications whilst the the other entity to the collaboration may need to take the end product and own the end product to be able to take that to market tying into intellectual property rights is the concept of confidentiality it's essential to maintain the integrity of information that's being disclosed between the parties which does include for example pre-existing intellectual property rights it can include research results know-how and technologies so you need to have clear restrictions on how this sensitive and commercially valuable information can be used by the other parties you'd normally make disclosures on the basis that they are only to be made on a strictly need to know basis to employees of the other party and for the purpose of the project only you would include provisions to make sure that the information is only used for the particular purpose of the product and that it's not exploited by the other party either commercially or otherwise um you can include protective measures to ensure that the information is stored in a safe place where it's stored how it's stored and who has access to the information and then there'll always be an obligation on the parties to return or destroy information on termination of the agreement confidentiality undertakings are ongoing through the duration of the collaboration agreement and depending on the nature of the information they may continue for a number of years post-determination of the agreement another area where confidentiality comes into play is announcements you need to think about whether the parties are free to make their own announcements or whether there's the risk that it because they may relate to confidential information you need some control over who makes them when they're made and also the content of announcements the next thing to sort of look at and think about is non-solicitation provisions and these can cover employees agents contractors and customers and basically you need to think about who the other side may have day-to-day contact with and they're important because if they're having contact for example with employees within your business who have specialist knowledge and are heavily involved in the the project and development um for example of a particular project then if your business loses that individual to to the other entity then that could have a significant impact on your business so what non-solicitation clauses do is they prevent the direct or indirect solicitation of such individuals and if a party is in breach of those obligations then they may be required to make a financial payment to the other party now the financial payment really just acts as a deterrent because it's unlikely that it will cover the full financial impact of losing the particular individual especially if they're valuable in the business from their knowledge or their expertise non-solicitation restrictions can will apply normally during the term of the agreement but again they can also apply for a period of months or up to for example a year or so following termination of the agreement another area to think about is data protection and you should identify if the project's going to involve the disclosure and processing of personal data you should map out what that data flow may be and consider whether the parties are acting in capacities as controllers in their own right um if one of the parties may just simply be a processor of the data or if there's a possibility that the parties are joint controllers of the data and depending on which category they fall into then appropriate provisions need including in the agreement whether that's data sharing provisions or processing provisions we also then move on to limitation of liability now limitation of liability provisions are provisions that allow the parties to limit their liability and financial exposure under the agreement so you need to think about what will be covered by a limitation of liability provision will it be all of the liabilities arising under the agreement or for example are indemnities to fall outside of the cap or will data protection fall outside of the cap you also need to think about what level are liability caps to be set at um what financial amount should that be would there be a risk of damage to property for example and should that be a different level to other obligations under the agreement ties into that is insurance if the parties can get insurance for the losses then should liability cap be kept at the level of the insurance policy it's also important to note that there's certain liabilities that you can't exclude your liability for and that includes death or personal injury that's caused by your negligence liability for fraud or misrepresentation and other certain liabilities that are set out as not being um able to be excluded as a matter of law so we touched on indemnities in terms of liability provisions now an indemnity is a contractual obligation to pay a particular type of financial loss and the party that receives the indemnity doesn't necessarily need to overcome some damages burdens that you would if you were having a damage claim for example remoteness of damages if the action gives rise to the indemnity then the loss is payable an example where you might find an indemnity being given is in relation to intellectual property rights so for example if you've licensed the other party the right to use your intellectual property rights they may expect you to give them an indemnity should a third party claim that their use of the rights as granted by you infringes their intellectual property then we move on to termination parties need to think about what the grounds for termination will be and whether they're going to have mutual rights for termination now some common grounds to include are if a party is in material breach of the agreement that's incapable of remedy or if the beach is capable of remedy but a party fails to remedy such breach within a particular given period of time for example 30 days you may also want the right to terminate if the other party suffers an insolvency or similar actions taken and again you need to think about the group structure of the party and any multi-jurisdictional issues because you may also want to terminate if similar actions taken against group companies in other jurisdictions another common area for termination is change of control by a contracting party um that occurs you know you'd normally have a restriction on that because you might want to prevent control of an entity going to a competitor and that would be the case if a competitor bought the other entity because they may have access to your confidential information and you'd want to restrict that the other thing to think about is whether to include a right to terminate for convenience that may seem attractive to the parties because if they just decide that the collaboration's not working and they want to bring the relationship to an end following termination there are consequences that we normally have a provision to deal with consequences of termination that may include returning or the destruction of confidential information it may also be the case that certain obligations will continue following termination for example obligations to pay royalty payments as we've seen earlier confidentiality obligations will continue um and non-solicitation clauses can continue so the parties may still be banned by those for a certain period of time following um termination of the agreement the final point to sort of look at is the governing law and jurisdiction clause um what law should given the contract if the the collaboration's occurring in in the uk in england and wales then it makes sense that the agreement's covered by english law and in just english jurisdiction of the courts but what the parties may need to consider is whether the courts are the appropriate forum for hearing a dispute if for example it relates to um specific technical information know how or sensitive and sensitive and confidential information then it may be that arbitration's the more appropriate um forum because that isn't in the public arena any information in the court hearing will become in the public domain whereas if you want to keep it out of the public domain for example if it's to do with patent applications then arbitration may be more appropriate so that really sums up what i wanted to cover about collaboration agreements today as i say if you do have any questions or queries then just drop us a note in the in the comments box and we'll do our best to respond to you thank you very much for joining me this [Applause] afternoon you