Licensing intellectual property is a subject matter that can be quite difficult to grasp. For one, licensing vocabulary (such as end-user, confidential, perpetual, proprietary, sublicense, warranties, jurisdiction, commercialization, infringement, indemnification, and termination) can be quite confusing. Drafting a license agreement, whether exclusive or non-exclusive, is challenging without adequate knowledge of intellectual property law.
Aside from explaining the terms above, a lawyer specializing in intellectual property licensing can help with licensing agreements in the following ways:
1) Define what the terms licensor and licensee shall mean in a licensing agreement
The term licensor refers to the party granting rights for use of its intellectual property. The licensee is the party making use of the intellectual property rights that the licensor is granting (for a period that both agree to). Licensees must exercise diligence to ensure that they are negotiating and licensing rights from their actual owner, and not from deceptive third parties.
2) Discuss specific terms and conditions of the license agreement
Whether you are already licensing rights or planning to license rights, you must not do anything that is prohibited under by law. A license agreement is a legal agreement. As such, parties may sue you if the license is not compliant with the law. This happens from time to time. Getting sued and being made liable for problems arising from unauthorized use or unlawful agreements is the last thing you would want.
3) Explain exactly what licensors can agree to grant a license for
Intellectual property is a general term that could refer to patents, trademarks, and copyrights. A license agreement can apply to any intellectual property, which the licensor and licensee must negotiate and agree on. Whatever the parties agree to will be strictly governed by the license grant.
4) Explain the difference between a trademark, patent, and copyright license
While any kind of intellectual property may be the subject of a license agreement, the agreements operate differently and are subject to different rules. Trademarks, patents, and copyrights have different uses and business purposes, and they are each governed by different federal and, sometimes, state laws.
There is no one-size-fits all intellectual property license agreement. Failure to understand the unique aspects of each category could result in a loss of intellectual property rights for the licensor or infringement liability for the licensee, among other things. An intellectual property attorney can help you avoid these possible fall outs.
5) Ensure that the technology license is compliant with applicable laws
A good intellectual property lawyer can help you decide if the rights and license should be granted for a royalty that varies depending on net sales or a fixed license fee. Both could have legal limitations depending on your circumstances.
Call us at War IP Law for assistance on your license agreement.
