Licensing can be an important pathway to commercializing technology. Inc. magazine published a great article recently providing tips from licensing experts on things you should consider in relation to licensing arrangements (“10 Tips for Licensing Intellectual Property” by Tim Donnelly at http://bit.ly/ajxLhk).
But what exactly is a licensing arrangement? Basically, it is an agreement which allows you to use, or by which you allow others to use, property to which you or they would not otherwise have access. Typically what we are talking about is intellectual property (IP) that is protected, either because it is a trade secret, or is subject to a legal restriction preventing its use, such as a patent or copyright.
There are many different types of licenses, including patent licenses, product licenses, copyright licenses, trademark licenses, and trade secret licenses. A license could be exclusive or non-exclusive, and could be a joint license (where both parties contribute IP to be used to jointly develop new IP), a cross license (where each party licenses IP to the other), or a conditional license (where, for example, a license is only granted on the happening, or not, of certain events).
The terms of license agreements can vary greatly depending on the nature of the transaction, but key matters to address include the type and and timing of payments, exclusivity, restrictions on competition, scope of market, ownership of existing and newly generated IP, obligations regarding defense and/or prosecution of IP claims, tax issues, rights of assignment, and dispute resolution.
This article was written by Jan Lederman, former Partner of TDS.
DISCLAIMER: This article is presented for informational purposes only. The content does not constitute legal advice or solicitation and does not create a solicitor client relationship. The views expressed are solely the authors’ and should not be attributed to any other party, including Thompson Dorfman Sweatman LLP (TDS), its affiliate companies or its clients. The authors make no guarantees regarding the accuracy or adequacy of the information contained herein or linked to via this article. The authors are not able to provide free legal advice. If you are seeking advice on specific matters, please contact Keith LaBossiere, CEO & Managing Partner at firstname.lastname@example.org, or 204.934.2587. Please be aware that any unsolicited information sent to the author(s) cannot be considered to be solicitor-client privileged.
While care is taken to ensure the accuracy for the purposes stated, before relying upon these articles, you should seek and be guided by legal advice based on your specific circumstances. We would be pleased to provide you with our assistance on any of the issues raised in these articles.