Compliance & Risk Management Flashcards

Which international framework most directly governs minimum IP protection standards that affect cross-border licensing compliance?

Answer: The TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights)

The TRIPS Agreement, administered by the WTO, establishes minimum standards for IP protection and enforcement that member countries must implement, directly shaping the licensing compliance environment across jurisdictions.

A licensee's insurance policy excludes coverage for 'intentional IP infringement.' Why is this distinction critical for risk management in licensing?

Answer: It means the licensee bears full financial exposure for willful infringement claims, which carry enhanced damages

Willful (intentional) IP infringement can result in enhanced damages (up to treble damages for patents), and insurance exclusions for intentional acts leave the licensee with full uninsured exposure for these heightened damages.

What is a 'compliance certification' requirement in a licensing agreement, and what risk does it address?

Answer: A requirement for the licensee to certify periodically that it is complying with all agreement terms, addressing the risk of undetected ongoing violations

A compliance certification requires the licensee to periodically affirm adherence to agreement terms, creating a formal record and increasing licensee accountability, which addresses the risk of ongoing violations going undetected between audits.

In which scenario would a 'most favored licensee' (MFL) clause create a compliance and risk management challenge for the licensor?

Answer: When the licensor grants a subsequent licensee better terms, potentially triggering automatic rate adjustments for MFL holders

An MFL clause requires the licensor to extend better terms granted to any later licensee to all MFL holders, so granting favorable rates in a new deal creates compliance obligations and financial exposure across the entire existing licensee base.

What is the primary risk management rationale for including a 'change of control' provision in a license agreement?

Answer: To allow the licensor to terminate or renegotiate if the licensee is acquired by an unvetted or competing entity

A change of control provision protects the licensor by allowing termination or renegotiation if the licensee is acquired by an entity the licensor did not vet, such as a competitor, which could misuse the licensed IP or harm the licensor's interests.

Which approach best manages the risk of trade secret misappropriation when licensing know-how alongside patents?

Answer: Implementing tiered disclosure with confidentiality agreements, need-to-know access controls, and post-termination obligations

Tiered disclosure combined with strong confidentiality obligations, need-to-know access controls, and post-termination restrictions provides layered protection against unauthorized use or disclosure of licensed know-how.

A royalty audit reveals that a licensee has been calculating royalties on net sales after deducting unauthorized expenses not permitted by the agreement. What is this practice called and what is the typical remedy?

Answer: Royalty base erosion; the licensor can claim the underpaid royalties plus interest and potentially audit costs per the agreement

Reducing the royalty base through unauthorized deductions is royalty base erosion, and license agreements typically entitle the licensor to recover the underpaid royalties plus interest, and often audit costs if the underpayment exceeds a specified threshold.