An owner of Intellectual Property (IP) can choose to license or transfer the IP it holds. If an owner chooses to license its IP, considerations such as whether the license will be exclusive or non- exclusive, what types of IP will be licensed, which products of the licensee(s) will be covered under the license, the term of the agreement, and the type and form of royalties to be paid by the licensee(s) will be included in the agreement(s). After a license agreement is entered, disputes can arise regarding compliance with the agreement. This may include certain breach of contract claims, such as disputes regarding compliance with various terms and provisions of the agreement, including payment of royalties, termination provisions, or non-performance under certain conditions of the agreement. Breach of contract claims related to IP rights can also arise under agreements that are not focused on IP rights. For example, causes of action surrounding breach of employment agreements also often include claims of trade secret misappropriation. In all these types of claims, understanding IP value is critical to a proper quantification of the resulting damages.
Damages in breach of contract cases often take the form of compensatory damages, which aim to restore the non-breaching party back to the position it would have been in, had the breach not occurred. Such remedies are often referred to as “benefit of the bargain damages” or expectation interest damages and may permit recovery of actual damages in the form of lost profits. Alternative remedies, such as disgorgement of Defendant’s profits attributable to the wrongful act may be available, to the extent such remedy does not overlap with other forms of damages sought. Similarly, damages for trade secret misappropriation often take the form of Plaintiff’s lost profits or disgorgement of Defendant’s profits attributable to the misappropriation, or in certain situations, a royalty for the use of the misappropriated trade secret(s). Ocean Tomo’s deep understanding of IP value and breach of contract damages makes us uniquely qualified to quantify damages in breach of contract matters involving technology and trade secret misappropriation matters.