Negotiating and Drafting IT Agreements

Essential IP Elements and Concepts

• Aspects of IT that can be protected by trade secret, copyright, patents, and trademark laws
• How is IP obtained, registered and enforced?
• What is legally protectable confidential information?
• Independent creation as a defence to infringement and risks arising from joint ownership of IP
• What rights do employees and independent contractors have in the IP they create?

Understanding the IP in your IT: Intellectual Property Considerations Critical to your Technology Agreements

• Identifying the IP and its ownership; potential pitfalls arising from joint ownership of IP
• Copyright, trade secrets, confidential information, outsourcing, M&A
• Characterizing IP involved in the transaction: foreground versus background IP; base product versus customization; methodologies versus work product
• What rights do employees and independent contractors have in the IP they provide as part of technology development?
• How information technology agreements can impact M&A transactions

Key Components, Players and Activities in IT Systems

• IT development, deployment, integration, migration and maintenance: who does what?
• The roles and interests of the key players: Systems Analyst, Programmer, Project Manager, etc.
• Typical life cycles of software development, licensing, customization and sale

Critical Cross-Border Issues in IT Contracting
Increasingly, the scope of technology agreements reaches beyond Canada and may engage foreign parties. Learn the multi‑jurisdictional issues that affect IT contracts, includes factors affecting the scope and terms of cross‑border agreements and the protection of IP rights and confidential/ personal information across jurisdictions

Risks and Liabilities from a Technical Perspective

• Data loss, data integrity
• Scope creep, integration risk
• Limitations of testing, bugs and defects
• Interaction with legacy systems and interface with other systems
• Vendor control of technology architecture

Take-Home Drafting Assignment: Distribution – This assignment is expected to take about 3-4 hours to complete and will be due the week after Module 3.

Introduction to Allocating Liability in the IT Contract

• Thinking through limits of liability, disclaimers, waivers and related clauses
• Liability issues associated with privacy, security and confidentiality
• Indemnities and how they are structured

Security Issues in IT Contracting

• Types of security risks: data integrity, transmission, access control, and more
• Methods for ensuring security of information and dealing with spyware

Privacy Issues Affecting IT Transactions

• Privacy overview and common traps in various IT transactions
• The impact of the US and EU laws
• Audit issues: reporting, recording and disclosure of security and privacy measures

How to Interpret Contracts

Confidentiality Agreements and Escrow Agreements
This session will examine two key but under‑appreciated contracts: Non‑Disclosure Agreements (NDAs) and Source Code Escrow Agreements. Learn how to minimize the risks of disclosing and receiving confidential information, as well as the common problems and pitfalls with escrow agreements.

Meanings of Common Words and Phrases

Demonstration: Negotiating Performance Warranties and Remedies
You will have an opportunity to observe and interact with a live negotiation from the perspective of both supplier and customer. The panel will examine various negotiation positions and provide guidance on the strategic use of language when drafting these important clauses.

Termination Rights

Software Licensing Agreements

• Portal access license vs license agreements: pros/cons from licensee and licensor perspectives
• Software bundling: issues arising from inclusion of 3rd party products, rights in derivative works
• Object code vs source code license agreements
• Relationship between software license, consulting services, maintenance and support Maintaining and Insuring

IT Support and Maintenance Agreements

• How to select the type of support coverage
• Characterizing errors and problems: anticipating and avoiding disputes
• Software updates, upgrades and support for old versions, hardware support and maintenance
• Standard versus customized packages, includes online versus on‑site support

Overview of Open Source Software Licensing

• Benefits and risks of open source software: mixing open source and proprietary software
• Types of open source software licenses: addressing open source software in your business model
• Trends, policy approaches and issues to watch out for

Demonstration: Negotiating a License Agreement
Observe senior practitioners negotiate the key elements of a License Agreement, and learn tools to effectively address issues including payment terms, scope, ownership of IP, strategies for negotiating value‑adds, and governance provisions.

Note: Due to the interactive nature of this workshop, live online attendance is required for this module. This module will not be recorded.  

Drafting Workshop and Assignment Review: License Agreement
Get personalized feedback on your drafting skills and gain strategies, best practices and model drafting clauses from highly experienced faculty.

Instructional Session: Advanced Negotiation Techniques for IT Agreements
Building on the negotiation techniques primer delivered in Module 1, you will learn about using Game Theory and Behavioural Economics in your negotiations, as well as how to conduct a self‑assessment of your negotiation skills.

NEGOTIATION WORKSHOP: Tying It All Together (Mock Negotiation)
In small groups, you will engage in a mock negotiation representing either the vendor or customer. Your performance will be assessed and you will receive feedback from an expert facilitator, including guidance on areas for improvement. After the live negotiations, you will benefit from a master debrief and group discussion.