Written by Rooney Nimmo Partner, Sean Hogle
When you think of “checklists,” what probably comes to mind is your daily/weekly to-do list, where you write out your more urgent tasks and work your way through them. You add new tasks to your list as you cross some things off.
To-do lists are handy for getting things done, but there is another kind of checklist that contains all the steps/tasks needed to complete a specific project or process. You use the same checklist every time you do that particular process/project. The list of tasks never changes.
First introduced decades ago by the U.S. Air Force, checklists have enabled pilots to fly aircraft of mind-boggling sophistication. According to author Atul Gawande, who wrote The Checklist Manifesto: How to Get Things Right, checklists aim to solve one of two operational vulnerabilities humans have in tackling any decision, problem, or task: ignorance — lack of information, and ineptitude — failure to apply known information correctly or consistently. It’s not that we don’t know; it’s that we seem to lack the attention and focus on investing in marshaling what we do know in a readily accessible form.
A simple checklist is a powerful legal knowledge management tool and ideally suited for assisting counsel in drafting or negotiating standard categories of agreements.
Lawyers of Redline, a legal knowledge-sharing platform, have posted an impressive collection of handy checklists for all kinds of situations. For example, there’s a checklist for IP ownership clauses and one for B2C arbitration provisions and class action waivers in the online Terms of Service. Each is constantly being updated and improved.
Here are selected excerpts from a checklist for evaluating the other side’s confidentiality agreements (on the assumption that your client will disclose the client’s valuable and proprietary information):
Defined Purpose. If the NDA contains a defined “purpose” for the CI exchange, is the purpose used to restrict the permitted use of CI, or is it used to limit the type of information that qualifies as CI (i.e., to qualify as CI, the info must be pertinent to the purpose)? If the latter, either push back or ensure the client understands the risks of disclosing something that’s not deemed german.
Affiliates. If affiliates are not mentioned, consider including them. (Even if your client has none now, it may later.) If they are included, ensure language making the signatory responsible for affiliate breaches. In all cases, affiliates should be defined as those controlling, controlled by, or under common control.
Special Restrictions. Consider including restrictions against (a) reverse engineering, (b) using CI to develop or improve any product or technology, (c) using CI to enhance a patent portfolio, or (d) using CI to assess whether patents are infringed.
Residuals. Consider pushing back on the clause or, failing that, adopt defensive measures to protect CI: (a) no intentional memorization; (b) no license to IP; (c) can use but not disclose; (d) limit to non-tangible information; (e) limit to technical information and not financial, business, marketing, or other information.
The team at Rooney Nimmo has experience helping companies draft or negotiate standard categories of agreements. If you need help or have any questions, please call us at +1 212 545 8022 or click here to learn more about our capabilities.
Initially published on epic.law.
Redline was founded by Sean Hogle. Click here to learn more.