In a previous post on IP Spotlight, I provided a few tips for negotiating non-disclosure agreements. In the post, I noted that a “form” NDA should only be considered a starting point. The parties should modify it as appropriate to fit the business situation and the type of information that is being disclosed.
Here’s an additional tip if the other party to the NDA is not a U.S. company: if the other party breaches the agreement, you may be able sue that party in the U.S. and win, but the U.S. court’s judgment may be difficult to enforce in the other country.
This is a particular issue in China. Chinese courts typically will not enforce judgments of U.S. courts, and they may not enforce an NDA written in English and subject to U.S. law.
So how can U.S. companies obtain an enforceable NDA with a Chinese company?
One way is to make it in Chinese (or bilingual, in English and Chinese, with the Chinese version controlling), and make it governed by Chinese law and subject to jurisdiction of the Chinese courts, or perhaps Hong Kong law and courts. Although this can be inconvenient for the U.S. company, the inconvenience may be a worthwhile.
Another option is to consider arbitration. While arbitration is not typically an ideal option for an NDA because only a court can grant a quick injunction to stop further disclosure of the information, foreign arbitration awards are generally enforceable in China. Most countries (including the U.S. and China) have signed the New York Convention for the Recognition and Enforcement of Arbitral Awards (http://www.newyorkconvention.org/).
So, consider a binding arbitration clause, and if the agreement will include an option for an injunction, that should be governed by Chinese law and issued by a Chinese court. Also, make it a bilingual agreement, with versions in English and Chinese.
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