IP Lawyer In Charlottesville, VA
Licensing Agreements for Intellectual Properties
If you are considering licensing an intellectual property that you own, you may want to contact an IP lawyer to ensure you are fully protected through this process. At Dale Jensen, PLC, we have been assisting clients with all legal issues concerning intellectual properties, including obtaining trademarks, copyrights, patents, and licensing deals for more than 10 years.
What Is Licensing?
When an individual owns the rights to a piece of intellectual property, they have two choices in how they utilize that property for financial gains. They can produce, market, and sell that property themselves or they can grant permission to another entity, while still maintaining control over their intellectual property. This permission is granted in the form of a license.
The four different types of intellectual property that you can grant a license to are:
- Trademarks: A trademark protects the name, words, and symbols that identify a certain product or service.
- Copyrights: A copyright protects the original work of authorship that is any tangible form of expression.
- Patents: Patents protect inventions.
- Trade Secrets: Trade secrets protect systems and methods. These can include marketing information, recipes and formulas, inventions which do not have patents, customer lists, process, software, and techniques.
What Should Be in a Licensing Agreement?
Although there are many places online where you can find sample licensing agreements, the truth is that any legal issue that has to do with intellectual property is complex and even the slightest error can result in serious legal issues and/or financial losses. This is why you should always consult with a Charlottesville, VA IP lawyer when you are negotiating a licensing agreement – whether it is your intellectual property to be licensed or it is your company which will be granted the license.
The scope of a license is one of the first things that needs to be decided when drawing up a license agreement. Issues such as how long the license will be in effect and what, if any, restrictions will there be are examples of items that need to be agreed upon.
Negotiations for a license agreement can be tricky because the intellectual property owner wants to be able to grant permissions that are attractive enough so the entity purchasing the license will be interested, but not so attractive that the owner loses control over their property. Some of the items that should be addressed in a license include:
- How long the license will be;
- If there are any uses of the intellectual property that are prohibited;
- Will the licensee have the right to modify the intellectual property or combine it with other products;
- Will the owner offer any support services or assistance to the licensee;
- Can the licensee transfer the rights of the license to another entity (referred to as a sub-license);
- What liability does the licensee have;
- What types of testing and training processes or procedures will be in place;
- Will there be a nondisclosure agreement regarding any confidential information;
- What, if any, warranties will be put in place;
- Is the licensee protected from infringement claims;
- What type of enforcement remedies will be in place; and
- What will the contract termination rights be?
Let an IP lawyer Help Protect Your Intellectual Property