15. MUTUAL INDEMNIFICATION AND INSURANCE.

15.1 Licensor’s Right to Indemnification.

Subject to the provisions of this Agreement, Licensee shall indemnify, defend and hold harmless Licensor and its Affiliates, and their respective employees, officers, independent contractors, consultants or agents, and their respective successors, heirs and assigns and representatives (the “Licensor Indemnitees”), from and against any and all claims, threatened claims, damages, losses, suits, proceedings, liabilities, costs (including without limitation reasonable legal expenses, costs of litigation and reasonable attorneys’ fees) or judgments, whether for money or equitable relief, of any kind (“Losses and Claims”), to the extent arising out of or relating to, directly or indirectly:

(a) the negligence, recklessness or wrongful intentional acts or omissions of Licensee, its Affiliates and/or its Sublicensees and its or their respective employees, officers, independent contractors, consultants or agents, in connection with Licensee’s performance of its obligations or exercise of its rights under this Agreement;

(b) any breach by Licensee of any representation, warranty, covenant or obligation set forth in this Agreement; and/or

(c) the Development and/or Commercialization (including, without limitations, the promotion, advertising, offering for sale, sale or other disposition), transfer, importation or exportation, labeling, handling storage, use of, exposure to any Licensed Products actually conducted by or for Licensee or any of its Affiliates, Sublicensees, agents and independent contractors (in each case, excluding any Development, Manufacture or Commercialization activities carried out by and/or on behalf of Licensor either within the Territory or outside the Territory); except in each such case for Losses and Claims to the extent reasonably attributable to any negligence, recklessness, wrongful or intentional acts or omissions, or breach of this Agreement by Licensor or a Licensor Indemnitee.

 

15.2 Licensee’s Right to Indemnification.

Subject to the provisions of this Agreement, Licensor shall indemnify, defend and hold harmless Licensee and its Affiliates, and their respective employees, officers, independent contractors, consultants or agents, and their respective successors, heirs and assigns and representatives (the “Licensee Indemnitees”), from and against any and all Losses and Claims, to the extent arising out of or relating to, directly or indirectly:

(a) the negligence, recklessness or wrongful intentional acts or omissions of Licensor, its Affiliates and/or its Sublicensees and its or their respective employees, officers, independent contractors, consultants or agents, in connection with Licensor’s performance of its obligations or exercise of its rights under this Agreement;

(b) any breach by Licensor of any representation, warranty, covenant or obligation set forth in this Agreement; and/or

(c) the Development and/or Commercialization (including without limitation promotion, advertising, offering for sale, sale or other disposition), transfer, importation or exportation, labeling, handling storage, use of, exposure to any Licensed Products actually conducted by or for Licensor or any of its Affiliates, Sublicensees, agents and independent contractors within or outside the Territory (in each case, excluding any Development or Commercialization activities carried out by Licensee or on behalf of Licensee at ALLERGAN’s direction hereunder either within or outside the Territory; provided that, notwithstanding anything to the contrary, Development or Commercialization activities commenced or performed before the Closing Date shall not be considered activities carried out by, for or on behalf of Licensee for the purposes of this indemnification obligation);

(d) subject to Section 15.5, the practice of the Licensed Intellectual Property in connection with the Licensed Products violates, infringes upon, or misappropriates the intellectual property rights of any Third Party; and

(e) personal injury or death, or any damage to any property, was caused by a defect in any Licensed Products manufactured by or for Licensor; except in each such case for Losses and Claims to the extent reasonably attributable to any negligence, recklessness, wrongful or intentional acts or omissions, or breach of this Agreement by Licensee or an Licensee Indemnitee.

 

15.3 Process for Indemnification.

A Party’s obligation to defend, indemnify and hold harmless the other Party under this Article 13 shall be conditioned upon the following:

(a) A Party seeking indemnification under this Article (the “Indemnitee”) shall give prompt written notice of the claim to the other Party (the “Indemnitor”). Failure to promptly notify the Indemnitor of any such claim shall not relieve the Indemnitor of any such duty to so indemnify except to the extent that the Indemnitor can demonstrate actual loss and prejudice as a result of such failure.

 

(b) Each Party shall furnish promptly to the other Party copies of all papers and official documents received in respect of any Losses and Claims. Failure to promptly furnish the other Party with such papers and official documents shall not relieve the other Party of any duty to indemnify except to the extent that the other Party can demonstrate actual loss and prejudice as a result of such failure. The Indemnitee shall cooperate as requested by the Indemnitor in the defense against any Losses and Claims.

 

(c) The Indemnitor shall have the right to assume and control the defense of the indemnification claim, including any settlement of such claim, at its own expense with counsel selected by the Indemnitor and reasonably acceptable to the Indemnitee. The Indemnitee may participate in and monitor such defense with counsel of its own choosing at its sole expense. The Indemnitor shall not settle or compromise the indemnification claim in any manner which would have an adverse effect on the Indemnitee’s interests (including without limitation in relation to the scope or enforceability of the Licensor Patent Rights or Licensor Know-How, or Confidential Information or Patent or other rights licensed to Licensee by Licensor hereunder), without the prior written consent of the Indemnitee, which consent, in each case, shall not be unreasonably withheld, delayed or conditioned. The Indemnitee shall reasonably cooperate with the Indemnitor at the Indemnitor’s expense and shall make available to the Indemnitor all pertinent information under the control of the Indemnitee.

 

(d) If the Indemnitor does not assume and conduct the defense of the claim as provided above, (i) the Indemnitee may defend against, consent to the entry of any judgment, or enter into any settlement with respect to such claim in any manner the Indemnitee may deem reasonably appropriate (and the Indemnitee need not consult with, or obtain any consent from, the Indemnitor in connection therewith), and (ii) the Indemnitor shall remain responsible to indemnify the Indemnitee as provided in this Article.

 

15.4 Insurance.

(a) During the Term and for three (3) years thereafter, Licensee, at its sole expense, shall maintain such types and amounts of insurance coverage relating to product liability (including without limitation, premises operations, completed operations and broad form contractual liability) that is comparable in type and amount to the insurance customarily maintained by pharmaceutical companies with respect to similar prescription pharmaceutical products that are marketed, distributed and sold, and which names Licensor as an additional insured Party, as its interests may appear.

 

(b) During the Term and for three (3) years thereafter, Licensor, at its sole expense, shall maintain such types and amounts of insurance coverage relating to product liability (including without limitation, premises operations, completed operations and broad form contractual liability) that is comparable in type and amount to the insurance customarily maintained by pharmaceutical companies with respect to similar prescription pharmaceutical products that are marketed, distributed and sold, and which names Licensee as an additional insured Party, as its interests may appear.

 

15.5 Limitation on Certain Indemnities.

Notwithstanding Licensor’s indemnification obligations under Section 15.2, in the event of Losses and Claims arising out of Section 15.2(d), Licensee shall recover from Licensor such Losses and Claims from fifty percent (50%) of the sum of all payments made by Licensee to Licensor prior to the date of the award of such Losses and Claims, not including the Up-Front Payment pursuant to Section 8.1, and, in the event that such awarded Losses and Claims exceed such amount, Licensee may deduct any such excess Losses and Claims from payments due by Licensee to Licensor after the date of the award of such Losses and Claim, up to a maximum of fifty percent (50%) of each such payment, until Licensee has been compensated in full for all such awarded Losses and Claims.

 

KASAN_기술이전, 라이선스, 특허실시, 공동연구개발 국제계약서, 영문계약서에서 면책조항 Indemnificati

 

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작성일시 : 2019.06.11 13:00
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실무적 포인트

·         진술 및 보증 조항 Rep. & Warranty

Ø  소유권/license허여권 보증 ()

Ø  계약대상 IP의 권리 유효성 보증 (적법 등록유지 , 절대적 유효성 ×)

Ø  3자의 지재권 비침해 보증 (고의침해 ○, 기타 )

 

·         면책 Indemnification

Ø  지재권 침해 claim시 면책규정은 license, 공동연구발 계약협상에서 쟁점이 많은 규정

Ø  특허를 제외한 copyright등 기타 권리에 대해서는 indemnification을 대부분 수용하는 편이나, 특허에 대해서는 면책보장의 수용이 어려운 경우가 많음. 

Ø  전세계 특허의 사전조사는 현실적으로 불가능하고, 고의적으로 copy한 경우가 아니더라도 유사성이 존재하는 한 침해를 구성  

Ø  반면, 저작권 등의 경우는 제3자의 저작물을 copy한 경우가 아니라면, 독자개발에 의해 발명/발견된 경우는 유사성이 존재하더라도 침해를 구성치 않음 

Ø  고의침해 경우(punitive damage대상이 됨) - 무제한 배상 보장 가능

Ø  기타 지재권 침해 claim경우 - 지불금액 총액 한도내에서 합의가 합리적  

Ø  제외: - 허여 용도 외 사용, 제공기술/제품의 임의 수정, 제공 외 기술/제품과 결합, 합성 등으로 인해 침해가 발생한 경우         

 

계약조항 영문 샘플

23. INDEMNIFICATION; INSURANCE; LIMITATION OF LIABILITY. 

23.1 General Indemnification by Licensor. Licensor CyDex shall defend, indemnify and hold Licensee Hospira and its Affiliates and Sublicensees, and each of their respective directors, officers, agents and employees, harmless from and against any and all losses, judgments, damages, liabilities, settlements, penalties, fines, costs and expenses (including the reasonable costs and expenses of attorneys and other professionals) (collectively “Losses”) incurred as a result of any claim, demand, action or other proceeding (each, a “Claim”) by a Third Party, to the extent such Losses arise out of: (a) the manufacture, use, handling, promotion, marketing, distribution, importation, sale or offering for sale of Captisol by CyDex, its Affiliates or any of their agents, or (b) CyDex’s breach of this Agreement, including without limitation any of its representations and warranties set forth in Section 8, or (c) any negligent or willful misconduct by CyDex or its Affiliates or any of their respective distributors, officers, directors employees or agents, in each case to the extent that such Losses are not due to Hospira’s or any of its Affiliates’ or Sublicensees’, or any of their respective directors’, officers’, agents’ or employees’ breach of this Agreement or negligence or willful misconduct.

 

23.2 General Indemnification by Licensee. Licensee Hospira shall defend, indemnify and hold Licensor CyDex and its Affiliates, and each of their respective directors, officers, agents and employees, harmless from and against any and all Losses incurred as a result of any Claim by a Third Party, to the extent such Losses arise out of: (a) the manufacture, use, handling, promotion, marketing, distribution, importation, sale or offering for sale of the Finished Product by Hospira, its Affiliates and Sublicensees, or (b) Hospira’s breach of this Agreement, including without limitation any of its representations and warranties set forth in Section 8, or (c) any negligent or willful misconduct by Hospira or its Affiliates or any of their respective distributors, officers, directors employees or agents, in each case to the extent that such Losses are not due to CyDex’s or any of its Affiliates’ or any of their respective directors’, officers’, agents’ or employees’ breach of this Agreement or negligence or willful misconduct.

 

23.4 Procedure.

 

(a) The person intending to claim indemnification under Section 9 (an “Indemnified Party”) shall promptly notify the other party (the “Indemnifying Party”) of any Claim in respect of which the Indemnified Party intends to claim such indemnification, and a reasonable explanation of the basis for the Claim and the amount of alleged Losses to the extent of the facts then known by the Indemnified Party. (Notwithstanding the foregoing, no delay or deficiency on the part of the Indemnified Party in so notifying the Indemnifying Party will relieve the Indemnifying Party of any liability or obligation under this Agreement except to the extent the Indemnifying Party has suffered actual prejudice directly caused by the delay or other deficiency.) The Indemnifying Party shall assume the defense thereof; provided, however, that if the Indemnifying Party assumes the defense, the Indemnified Party shall have the right to employ counsel separate from counsel employed by the Indemnifying Party in any such action and to participate in the defense thereof, but the fees and expenses of such counsel employed by the Indemnified Party shall be at the sole cost and expense of the Indemnified Party unless the Indemnifying Party consents to the retention of such counsel or unless the named parties to any action or proceeding include both the Indemnifying Party and the Indemnified Party and a representation of both the Indemnifying Party and the Indemnified Party by the same counsel would be inappropriate due to the actual or potential differing interests between them. And provided further that, if the Indemnifying Party shall fail to assume the defense of and reasonably defend such Claim, the Indemnified Party shall have the right to retain or assume control of such defense and the Indemnifying Party shall pay (as incurred and on demand) the fees and expenses of counsel retained by the Indemnified Party.

 

(b) The Indemnifying Party shall not be liable for the indemnification of any Claim settled (or resolved by consent to the entry of judgment) without the written consent of the Indemnifying Party (which shall not be unreasonably withheld or delayed). Also, if the Indemnifying Party shall control the defense of any such Claim, the Indemnifying Party shall have the right to settle such Claim; provided, that the Indemnifying Party shall obtain the prior written consent (which shall not be unreasonably withheld or delayed) of the Indemnified Party before entering into any settlement of (or resolving by consent to the entry of judgment upon) such Claim unless (A) there is no finding or admission of any violation of law or any violation of the rights of any Third Party by an Indemnified Party, no requirement that the Indemnified Party admit fault or culpability, and no adverse effect on any other claims that may be made by or against the Indemnified Party and (B) the sole relief provided is monetary damages that are paid in full by the Indemnifying Party and such settlement does not require the Indemnified Party to take (or refrain from taking) any action.

 

(c) Regardless of who controls the defense, the other party hereto shall reasonably cooperate in the defense as may be requested. Without limitation, the Indemnified Party, and its directors, officers, advisers, agents and employees, shall reasonably cooperate with the Indemnifying Party and its legal representatives in the investigations of any Claim.

 

23.5 Insurance. CyDex will procure and maintain, at its own expense, for the duration of the Agreement, and for [*] thereafter if written on a claims made or occurrence reported form, the types of insurance specified below with carriers rated [*]. Best or like rating agencies:

  a. Workers’ Compensation accordance with applicable statutory requirements and shall provide a waiver of subrogation in favor of Hospira; 

  b. Employer’s Liability with a limit of liability in an amount of not less than $[***]; 

  c. Commercial General Liability including premises operations, products & completed operations, blanket contractual liability, personal injury including fire legal liability for bodily injury and property damage in an amount not less than $[***]; 

  d. Commercial Automobile Liability for owned, hired and non-owned motor vehicles with a combined single limit in an amount not less than $[*];  

  e. Excess Liability including product liability with a combined single limit in an amount of not less than $[*]; 

  f. Commercial Crime or Fidelity Bond in an amount of not less than $[*] including an endorsement for Third Party liability without the requirement of a conviction. 

  g. Cargo Legal Liability insurance covering all risks of physical loss or damage to cargo handled by CyDex. The limit of liability shall not be less than $[*]. 

 

23.6 Limitation of Liability. EXCEPT FOR (1) PERSONAL INJURY, INCLUDING DEATH, (2) TANGIBLE PROPERTY DAMAGE, (3) EACH PARTY’S INDEMNIFICATION OBLIGATIONS, (4) DAMAGES ARISING OUT OF AN INTENTIONAL BREACH OF THE CONFIDENTIALITY OBLIGATIONS HEREIN, (5) DAMAGES ARISING OUT OF CYDEX’S BREACH OF SECTION 2.4, AND (6) DAMAGES FOR WHICH CYDEX IS RESPONSIBLE PURSUANT SECTION 3.6, 3.7 OR 6.4.

 

KASAN_특허실시, 기술이전, 라이선스 영문계약서에서 진술보증, 면책조항 관련 실무적 포인트 몇 가지 면책조항

 

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작성일시 : 2019.05.23 10:00
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미국 DTSA (the Defend Trade Secrets Act of 2016)는 기존의 미국연방 산업스파이방지법(The Economic Espionage Act, 약칭 EEA, ‘경제스파이법’)을 추가, 수정, 보완하는 연방법률입니다. 영업비밀침해소송이 주지방법원 관할이었으나 신법에 따라 특허소송과 마찬가지로 연방지방법원 관할로 변경되었습니다. 다만, 기존의 USTA에 따른 각 주법이 폐지된 것은 아닙니다.

 

또한, 미국 기업의 영업비밀을 침해한 외국회사 또는 외국인에 대한 강력한 제재조치를 포함하고 있습니다. 예를 들어, 영업비밀침해죄 이외에도 외국 또는 외국 회사 등 단체에 이익이 된다는 사실을 알면서 의도적으로 영업비밀을 침해하는 행위를 산업스파이죄(Economic espionage)로 따로 규정하여, 개인에 대해서는 15년 이하의 징역형 또는 범죄행위당 500$ 이하의 벌금형, 기업 등 단체에 대해서는 1,000$ 또는 침해로 인한 이익액의 3배 중 더 큰 액수 이하의 벌금형으로 처벌할 수 있습니다. 실제 사건에서도 외국기업에 부과된 벌금액수가 수십억원 또는 수백억원 규모에 달합니다.

 

또한, DTSA는 최근 영업비밀보호의 강화 흐름을 반영하여 보호대상 영업비밀의 정의, 침해행위(misappropriation)의 범위를 대폭 확대하고, 민사적 권리구제조치로 징벌적 손해배상, 침해금지명령(injunction)뿐만 아니라 영업비밀보유자의 일방적 신청(ex parte)에 의한 침해물 압류명령(civil seizure)까지 허용하는 등 권리자 보호를 대폭 강화한 내용입니다.

 

DTSA에서 가장 새로운 조항은 다음과 같은 내부고발자(whistleblower) 면책규정을 명시한 조항입니다. 영업비밀침해행위를 정부기관이나 수사기관 등에 제보한 내부자에게 어떤 책임도 추궁하지 못하도록 하는 내부정보제공자 보호조항을 두고 있습니다. 그 보호대상에는 내부 직원뿐만 아니라 외부 거래회사, 컨설턴트, 변호사 등도 포함됩니다.

 

§ 1833 Exceptions to prohibitions

(b) IMMUNITY FROM LIABILITY FOR CONFIDENTIAL DISCLOSURE OF A TRADE SECRET TO THE GOVERNMENT OR IN A COURT FILING.

(1) IMMUNITY - An individual shall not be held criminally or civilly liable under any Federal or State trade secret law for the disclosure of a trade secret that -

(A) is made -  

(i) in confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and

(ii) solely for the purpose of reporting or investigating a suspected violation of law;

 

 

KASAN_[내부고발보호] 미국 영업비밀보호법 DTSA의 내부고발자 면책 조항 소개.pdf

 

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작성일시 : 2018.07.19 09:19
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