tag:blogger.com,1999:blog-3350494960151472132.post1968903074518728547..comments2024-03-29T03:24:48.418-04:00Comments on Knowledge to Negotiate: Intellectual Property Infringement RemediesJackhttp://www.blogger.com/profile/04890630881239586638noreply@blogger.comBlogger2125tag:blogger.com,1999:blog-3350494960151472132.post-72172650807121289742013-01-09T14:55:44.413-05:002013-01-09T14:55:44.413-05:00Andrew, I think it may be a choice of drafting pre...Andrew, I think it may be a choice of drafting preference. If you don't include d) then they may have no remedy other than to breach the agreement. If you include d) there will be few, if any, times they will get that as the language requires them to do the first of the list that was practicable, not what is commercially reasonable. <br />In negotiating it you do make a point that I do use when a supplier wants to select which remedy. I will give that option only if that is cost neutral to me. So for them to select one option they will have to incur any incremental cost I incur resulting from that option..Jackhttps://www.blogger.com/profile/04890630881239586638noreply@blogger.comtag:blogger.com,1999:blog-3350494960151472132.post-51629538664129458602013-01-07T10:50:36.430-05:002013-01-07T10:50:36.430-05:00Good post. I agree that its all about cost and ge...Good post. I agree that its all about cost and generally, the buyer will want to stay higher up on your list. One technique that works well when the modify (b) and replace (c) do not cause significant expense is to group a-c as options to the seller and termination (e) as a last resort / "if none of the preceding are practicable". I'm leaving (d) out of this comment; I do not usually see that one (probably by the nature of the contracts I do).<br /><br />The cost of these remedies can be further defined / allocated. I've seen contracts that permit the seller to replace or modify so long as the seller picks up the cost of re-deploying or integrating the new version. I've also seen different variations on the refund (e) scenario; the refund might be pro-rated and might be limited to particular elements of the contract.<br /><br />One last comment: "As a buyer if you weren’t the cause for the infringement, why should you be forced to pay more because of it?" Assuming the issue is a patent claim rather than a trademark or copyright claim, the answer may be that neither the buyer nor seller are well positioned to avoid the claim. The seller has "caused" the infringement by unknowingly incorporated some patented technology into its product, and the buyer as "caused" the infringement by unknowingly using a product that incorporates some patented technology. The argument is often made that the seller is better positioned to know of the infringement and also to control the infringement. While that's generally true, the seller may view patent infringement as a third party risk that isn't priced into its offerings. In my view, this seller argument doesn't hold up well if applied to copyright, trademark, or trade secret IP types. The seller is probably not likely to infringe any of those without some knowledge or bad act.Anonymoushttps://www.blogger.com/profile/08565787490696857030noreply@blogger.com