Drafting IP Agreements,
Contract Audits

First, form: under Polish law, an assignment of economic rights must be in writing to be valid – an email or an invoice is not enough. The agreement must expressly list the fields of exploitation, because only what is named is transferred – and it cannot cover fields that do not yet exist when it is signed. A key and often overlooked element is consent to exercise derivative rights: without it, you cannot lawfully modify or develop the work, which can be fatal with software. The agreement should also clearly address remuneration (if it is silent, the author is entitled to separate remuneration, by default for each field of exploitation), the moment the rights pass, and delivery of media and source code. Moral rights are non-transferable – they are secured by the author's undertaking not to exercise them.

Statutory defaults have gaps. An employer acquires an employee's work only within the limits set by the purpose of the employment contract – whatever was created outside the scope of duties does not transfer automatically. Likewise, the right to a patent belongs to the employer only if the invention resulted from the employee's duties – and that is exactly what disputes tend to be about. The biggest gray areas involve B2B contractors and freelancers: without an express assignment clause, the rights to their work may stay with them. In due diligence practice this is the most common problem at technology companies, where part of the code often turns out not to belong to the company legally. On top of that, the inventor retains a statutory right to separate remuneration and the right to be named as inventor – both are worth settling in advance.

An IP audit is an inventory and a verification in one: what the company actually owns (trademarks, patents, designs, domains, code, know-how), whether the rights really belong to it (a complete chain of agreements with employees, contractors and subcontractors), whether open-source components are compatible with the business model, whether official fees have been paid, and whether the business is treading on anyone else's rights. The outcome can be a list of gaps with a remediation plan – most gaps are easy to fix. An audit is typically done before an investment round or a company sale, before entering a new market or a product launch, after acquiring another company – and in quieter times, on a regular cycle of every year or two.

Start with scope: exclusive or non-exclusive, territory, duration, field of use, and sublicensing (which requires the right holder's consent). A license agreement for industrial property rights must be in writing to be valid. On royalties, the devil is in the calculation base (net or gross revenue, and calculated on what) – reserve the right to audit the licensee's accounts. With an exclusive license, add a minimum-performance clause so the licensee cannot shelve the technology; with a trademark, provide for genuine quality control over the licensee's goods, because a mark used without oversight can lose value or even be revoked. Also settle who maintains the right, who pursues infringers, and consider recording the license in the register – a registered exclusive licensee can enforce claims on its own.

Legal protection of trade secrets works only if the company takes reasonable steps to keep the information confidential – a requirement that comes straight from the law, not just good practice. Before you disclose anything valuable, sign an NDA that defines the scope of the information and how long the obligation lasts. It is also worth adding a contractual penalty, which solves the problem of proving the amount of loss – often the hardest part of a dispute. Disclose only what the other party needs to know, mark materials as confidential, and require their return or deletion when the cooperation ends. Mind the limits of this protection: a trade secret does not protect against independent development or against reverse-engineering the solution from the product itself – for solutions visible to the naked eye, consider patent or design protection instead.

The first risk: the contract gives you only a license instead of an assignment of rights. Sometimes it does not specify which rights are granted at all – and then only a non-exclusive license is presumed. Second: no field of exploitation covering modifications and no consent to exercise derivative rights, so you cannot lawfully develop the system with another vendor (vendor lock-in). Third: no obligation to hand over the source code and documentation. Fourth: a broken chain of title – the software house used freelancers and subcontractors from whom it never validly acquired the rights, so it could not transfer them to you. Fifth: open-source components under "viral" licenses (e.g. GPL), which can force you to disclose the code of your entire product. Each of these defects surfaces at due diligence at the latest – and fixing it then costs many times more than having the contract reviewed before signing.

A freedom-to-operate (FTO) search answers a different question than a patentability search: not "Can I patent this?" but "Does my product infringe someone else's rights?". It analyzes the claims of patents in force in your target markets, as well as pending applications – patents are territorial, so the search is done separately for each market. Watch out for equivalents: the scope of protection can reach beyond the literal wording of the claims. The outcome is a decision: green light, designing around the patent, negotiating a license, or attacking a weak patent (i.e. filing for its invalidation). It is worth doing the search before investing in production and marketing – the cost of a redesign grows with every month – and pairing it with ongoing monitoring of competitors' filings.

Buyers and investors are not looking for perfection – they are looking for risks they do not want to pay for, and every gap they find becomes an argument to cut the price mid-negotiation, when you have no alternative. On the IP side they check above all: proof that rights were assigned by every employee and contractor (the most common problem at software companies), trademark registrations in the countries where the company actually operates, an audit of open-source licenses, and agreements with key clients. In market practice, most deals end with a downward price adjustment precisely because of due diligence findings. So start the cleanup – your own IP audit and fixing the gaps – 6–12 months before the planned process, while defective agreements can still be repaired without risking a lower company valuation.

First, background IP: knowledge and rights brought into the project remain the property of the party contributing them, and partners get a license for project purposes only – it is worth listing them in an annex. Second, foreground IP: who will own the results and in what shares, and in the case of co-ownership – who files the patent application, who pays, and how decisions are made. Third, publications: researchers want to publish, and in Europe publication before the patent filing irreversibly destroys novelty – the standard is an obligation to hold publications back until the application is filed. Fourth, commercialization and revenue sharing. In grant-funded projects (e.g. NCBR), state-aid rules come into play: results should be transferred to the company at market price.