Celegon Srl: Making use of confidentiality and IP transfer agreements in business partnerships

You want to commercialise your products with the support of external business partners? The story of this Italian SME, Celegon Srl, teaches us how crucial it is to take confidentiality measures and IP protection into consideration before entering into any business partnership.

Translations of our Fact Sheets

The following are a selection of our top 15 downloaded Fact Sheets that are now available in five EU languages:
German (DE), Spanish (ES), French (FR), Italian (IT) and Polish (PL).

  • Fact Sheet on "Plant variety protection", available here.
  • Fact Sheet on "Collection of evidence", available here.
  • Fact Sheet on "How to define and manage background in Horizon 2020", available here
  • Fact Sheet on "IP enforcement: asserting your rights", available here.
  • Fact Sheet on "Design searching", available here
  • Fact Sheet on "The plan for the exploitation and dissemination of results in Horizon 2020", available here
  • Fact Sheet on "IP management in MSC Actions", available here in DE, ES, FR and PL for H2020 projects, and here in IT and PL for FP7 projects. 
  • Fact Sheet on "Domain names and cybersquatting", available here.
  • Fact Sheet on "Copyright essentials", available here.
  • Fact Sheet on "Trade secrets: An efficient tool for competitiveness", available here.
  • Fact Sheet on "Intellectual property management at trade fairs", available here.
  • Fact Sheet on "IP Audit: Uncovering the potential of your business", available here.
  • Fact Sheet on "Non-disclosure agreement: a business tool", available here.
  • Fact Sheet on "Intellectual property relevance in internationalisation", available here.
  • Fact Sheet on "Technology Licensing-in", available here.

EUIPO report: The Baseline of Trade Secrets Litigation in the EU

On 17 August EUIPO released a report examining the current level of trade secrets litigation, as well as the profiles of the parties involved and the courts dealing with trade secrets matters.

The study itself covers all 28 EU Member States and contains a mapping of the current national legal systems for the protection of trade secrets, competent courts and procedures in place, including remedies against the unlawful acquisition, use or disclosure of trade secrets.

Find further information and the link to the full text of the study, here.

European IPR Helpdesk Bulletin Issue (29)

This Bulletin issue is dedicated to IP and fashion focusing on the crucial role played by IP in protecting the products of this creative and vibrant industry.

The European IPR Helpdesk presents, on an introductory article, the different IP tools available to protect fashion designs, while the next contribution by Matej Michalec, lawyer at V4 Legal in Bratislava, develops the topic of IP protection tools in the European Union for the fashion industry, highlighting the issue of design protection and its overlap with copyright.

Axel Ferrazzini, Managing Director at 4iP Council, gives some useful hints on how to protect inventions in the fashion field, revealing that patent protection of fashion items is far from being a recent topic.

Then, EUIPO provides an article on the increased prevalence of counterfeiting practices in this sector, and the Federation of the European Sporting Goods Industry (FESI) focuses on the rise of online counterfeiting in the sporting goods industry and the measures available to tackle this problem.

In addition, we have interviewed Claudia G., a Spanish fashion designer who provides us with an insight into the work of designers and how they address IP matters.

As per usual, the Bulletin reports information about the European IPR Helpdesk’s past and future events together with the latest updates from our Helpline service, as well as a brand-new IP and fashion quiz and our usual patent quiz.

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MoUs, NDAs: how to proceed in order to add a new signatory?

Case

We are several partners involved in the preparation of a project proposal. For this purpose, we have signed a MoU/NDA. What happens if a new entity joins the partnership? Should we revise the MoU/NDA? Can we sign a separate MoU/NDA only with the new organisation and just inform the other parties? Alternatively, could bilateral MoU/NDAs between the main applicant and each individual partner be enough?

Answer

In case a new entity joins the partnership formed in relation to the project proposal, this entity cannot automatically become a party to the agreements already in place (NDA and/or MoU). Two options are possible to include this new partner as a party:

  • The first option is to amend the whole agreement, which will in principle require the signature of all parties.
  • An easier option could be the signature by the new partner and the coordinator of an accession form. The advantage of an accession form is that it does not require the signature of all partners all over again: the coordinator informs them all and signs the form if everyone agrees. This option is possible provided that the coordinator has a mandate to do so from the other partners.

We would however advise against the solution of concluding bilateral MoU/NDAs between the coordinator and each partner. Legally speaking indeed, there is a difference between having a global NDA/MoU between all partners (where each signatory is bound to respect the confidential information disclosed by everyone else, and protected against disclosures to anyone else), and having separate agreements only signed by the coordinator. While these seem easier to implement, they do not create the same contractual obligations amongst the parties. In that case, the various partners would be bound to confidentiality clauses only to the coordinator, not amongst themselves. They would not be directly liable to the other partners in case they breach their confidentiality obligations, and vice versa. This may make enforcement matters difficult; for this reason we would recommend sticking to a single agreement.

Acting wisely in collaborative research projects

This new case study tells the story of a cooperation between the Department of General Biophysics at the University of Łódź, Poland and the GRAVITA Fertility Clinic. The case study explains how the two partners developed a collaborative research project with the help of the Enterprise Europe Network and how they managed both their IPRs and IP strategy.

WIPO: Trade secrets - the hidden IP right

The World Intellectual Property Organization (WIPO) has recently published an article regarding trade secrets, which provides a quick overview of this "hidden right". Learn how trade secrets are regulated in the EU and in the US; how they can be used to protect inventions in comparison to patents, and how they can prove particularly beneficial for SMEs.

Check this interesting article and for further information on trade secrets, consult the European IPR Helpdesk fact sheet "Trade secrets: an efficient tool for competitiveness".

The European IPR Helpdesk is looking for case studies: tell us about your IP success story

Would you like your IP success story to be known by thousands of people around Europe?

What about becoming a source of inspiration to SMEs, institutions and researchers?

Tempted?

Then, tell your story as one of the European IPR Helpdesk's case studies and we will spread your success all around Europe!

Case studies are part of the range of publications developed by the European IPR Helpdesk in order to increase awareness of IP. Case studies contain concrete examples on how SMEs, institutions or academics use IP to achieve business success.

The European IPR Helpdesk disseminates case studies free of charge to an audience of more than 13,000 people through its website and through its newsletters, with around 8,000 subscribers.

Check our library if you would like to find out more about our case studies and contact the European IPR Helpdesk's IP advisors, Alejandra Aluja (alejandra.aluja@iprhelpdesk.eu) and Paula Barnola (paula.barnola@iprhelpdesk.eu), if you would like your case study published by the European IPR Helpdesk.

We are looking forward to hearing about your success story!

TNtech: The ABC of IP strategy for a small R&D company

Transforming the results of R&D into commercially viable products is a business challenge that must be carried out in conformity with a coherent IP strategy. Such a strategy helps save time and resources. Additionally, a sound IP strategy is a key element in avoiding and fighting against infringement and unfair competition practices carried out by competitors. 

In this new case study, TNtech, a Slovakian SME, tells us about the main measures adopted within the framework of its IP strategy and shares some useful advice with us.