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I am working to license a technology for which I have US patent pending (I am in USA). I have a potential licensee in Germany. I would like to work with an NDA, not least to protect the option of extending the filing into Europe. The potential licensee wants to use their NDA, which stipulates jurisdiction in Germany.

My questions are:

1) Does a cross-border NDA have any value? It seems that it would be expensive to make a complaint.

2) Is there a better way for me to conduct this?

3) Would I need German based IP professional for all dealings with this?

Thanks, Tim

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  • #1, the validity of a cross border NDA depends on what is in the NDA and if US and German law supports the enforcement of the clauses. And 2 and 3 are really more of requests for legal advice, which are off topic here on LSE. – BlueDogRanch Feb 26 '16 at 19:25
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    Usually a choice of law clause in a business to business NDA would be honored by Germany and most other countries with a meaningful tech sector, although there might be specific exceptions (e.g. for national security). Most patent professionals in any country with a meaningful tech industry would be familiar with how to obtain a patent with international effect, although you would need a local litigator to enforce the patent in a particular country. Also, FWIW, while 2 may be off topic, 3 does not strike me as a request for specific legal advice. – ohwilleke Dec 24 '16 at 6:39
  • To answer #3: I have to think that at the least you really need a U.S.based IP lawyer who has a really solid base of experience handling situations where parties located in Germany and the EU have been involved. Of course, you also want somebody who can address the law of the relevant state/s here in the U.S. on the effect and enforceability of types of provisions in NDA's in those jurisdictions. Put more directly: you really, really need to get the counsel of a well-qualified attorney/firm who specializes in international IP law to get any kind of trustworthy answers to Questions #1 and #2 . – mostlyinformed Dec 24 '16 at 10:54
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I have been working across Europe since 1994 - my UK based company has held contracts with the US and Europe. Most my contracts have reference that state it will be handled in the English courts, one covered Dutch courts, another covered US courts. I was happy with the money, I did not expect to fall out with the client and thus signed, did my thing and took their money.

If you use a contract that says German courts, and you/your client have disagreement then you will have to fight it out in Germany.

While German lawyers can be expensive, unlike the US, many are bound by law to fixed costs pending on the advice/service they are offered (They can ask you to wave this right in order to charge you more). I mention this in such that do not assume that a German lawyer is going to put his kids and grand kids thru school on your invoice.

I would seek advice if not already too late - I was reading into patents recently and believe that sharing a patent prior to approval, can negatively impact your claim to it if there is a dispute later. NDA will offer some protection, but don't assume you are fully covered.

Side note: I belong to a Berlin facebook starter group and someone I never met recently made a post there. They supposedly are US based, part time Berlin based patent lawyers. I am not endorsing them - merely recalling a conversation thread there. Search Facebook Berlin Startups and join/ask there for more info.

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