(Numbers) and IP Licensing Agreements
|Written by: Raymond Millien
Co-founder of PCT® Law Group
Posted: January 3, 2013 @ 10:30 am
During the course of my practice, I am continually amazed at the contents of IP and technology-related agreements I receive from opposing counsel who happen to be “good” lawyers at “good” firms. While not getting into all the “strange,” “sloppy,” or downright “wrong” legal verbiage I see, I do have one thing that has been bothering me lately. What’s that, you ask? Well, it’s the use of numbers and those silly parentheticals.
I am sure all of you have seen language in agreements such as:
- “In consideration of the license rights granted herein by Licensor to Licensee, Licensee shall pay to Licensee a one time, up-front, non-refundable license fee of one million United States dollars (US$2,000,000.00).”
- “In consideration of the license rights granted herein by Licensor to Licensee, Licensee shall pay a flat royalty based on two and one-half percent (2.0%) of Gross Revenues received from the sale of Licensed Products.”
- “Licensee shall pay any deficiency, plus interest thereon from the date each payment was due, within thirty (20) days of the date of any notice of such discrepancy.”
Now, for those of you paying attention, you will notice that the spelled out numbers do not match the digits appearing in parentheticals. Why do attorneys do this? What class in law school do they teach this? I’m told this is a practice that dates back to the days of carbon copies and “old school” telefax machines, where parties needed two chances to be able to discern the figures in legal documents.
But, in today’s world of TrueType fonts and portable document formats, why continue this practice? Which number governs if after reviewing a twenty (20) page license agreement, both sets of lawyers and clients did not catch the discrepancy!? (Wasn’t that “twenty (20)” annoying!?) Well, different jurisdictions have different rules of contract construction! Why leave it to chance? Do people realize that over the course of an already complex IP agreement, such practice may add one or more pages to the document’s length!?
So, for everyone’s sake, I propose the following simple rule: If the number is from zero to nine, write it out in words, else write it in Arabic digits! If it works for college essays, it should work for IP agreements (and all other contracts) too!
About the Author
Raymond Millien, BS, Columbia University, JD, George Washington University, was named one of the “World’s 300 Leading IP Strategists” by IAM Magazine in 2012. He is the co-founder of PCT® Law Group, PLLC. Established in 2008, PCT has offices in Virginia, Florida, and Washington, DC. He is the former General Counsel of Ocean Tomo and was VP and IP Counsel at The American Express Company. He can be reached at firstname.lastname@example.org.
PLEASE NOTE: This article reflects his current views and should not be necessarily attributed to his former, current or future employers, or their clients.