Licensing of intellectual property is a subject matter that can be quite difficult to grasp. For one, licensing terms (such as end-user, confidential, perpetual, proprietary, sublicense, warranties, jurisdiction, commercialization, infringement, indemnification, and termination) can be quite confusing. Drafting a licensing deal for an exclusive or non-exclusive license is also extra challenging without adequate knowledge of copyright law.

Aside from explaining the terms above, a lawyer specializing in IP licensing can help in licensing agreements through the following:

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 on, oftentimes, licensed products. In contrast, the term licensee refers to the party making use of intellectual property rights that the other party decided to grant (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 deceiving third parties.

2) Discuss specific terms and conditions of the licensing contract

Whether you are licensing rights or planning to license rights, you must not do anything that is prohibited under copyright laws. A license agreement is a legal agreement. As such, parties may sue you if the IP license that the licensee agrees to is not pursuant to relevant statutory provisions. 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 what licensors can agree on to grant a license for license agreements

Licensing AgreementsA licensing agreement may be for intellectual property, which is a general term that could refer to patents, trademarks, and copyrights. Furthermore, the licensor and licensee may negotiate and agree on licensed technology. This would likely involve a license to proceed with commercial use of a patent (for the reproduction of certain products) which must be strictly governed by the license grant.

4) Explain the difference between a trademark, patent, and copyright license

Negotiation for a trademark license is often straight-forward and is covered by applicable rules for a trademark license agreement. Patent licensing, meanwhile, involves patent rights to produce and distribute a patented product. Such must comply with rules on drafting a patent license agreement. Finally, a copyright license involves copyrighted works and derivative works of the original copyright owner.

5) Ensure that the technology license is covered by applicable law

A party who cannot reproduce and distribute a good patented product would likely have rights granted (which could be non-exclusive or exclusive rights) to another party who can manufacture and have the products sold. A good IP 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 a limitation depending on your case.

If you are planning to draft, sign, or terminate licenses, make sure that the licensed rights that constitute the agreement are expressly stated and are pursuant to the copyright act. Call us at War IP Law for assistance on your license contract or licensing agreement.