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?
Examples of Licensing Law in Technology
If your company is like the majority of companies out there, most of your IP activity is fortunately going to be with licensing and not litigation. Consulting with an IP lawyer Charlottesville, VA will ensure that your licensing agreement adequately protects you.
A license is pretty much an agreement between the owner of technology (the licensor) and the licensee. The company wants to use that technology, so both enter into a mutually beneficial agreement whereby the licensee gets the rights to use the technology and the license owner gets compensation. In a technology context, licensing really involves business considerations, technical considerations, and of course legal considerations. You really want to make sure at the very beginning that you and your IP lawyer Charlottesville, VA know what success looks like on all three fronts, as well as know what your objectives are when you are licensing.
One thing that you should keep in mind is that it is very important that your plan has flexibility. Any IP lawyer Charlottesville, VA will tell you that flexibility is the hallmark of licensing because there is almost always some kind of solution that works both for the licensee and for the licensor. You can change the duration of the license, the scope of the license, the payment process, the payment method – anything can be done with flexibility! Another aspect of licensing flexibility is the duration of the license. Not all licenses are permanent; some have a fixed period of time. A year, a month, ten years -whatever it might be. This is fine if you are a licensee in that situation with a fixed period of time; just make sure that it is long enough. You do not want to have to go back to the licensor to renegotiate because of course by that time you have already baked the technology into your platform, and the licensor knows this, so they may up the price. Working with an IP lawyer Charlottesville, VA ensures you have someone looking out for your best interests.
An early question in almost every license negotiation is the price; but the truth is, the price is typically settled at the end of the licensing negotiation. Oftentimes, other terms of the deal impact the price, so those must be negotiated first. Licenses can be presented in many different ways. This gives you the chance to create a license that suits your particular deal and your particular needs. As an example, there are licenses that are exclusive and licenses that are non-exclusive. There are also licenses that are half and half of both of these options. Consult with an IP lawyer Charlottesville, VA to determine which of these is best for you.
- An exclusive license is a license in which the licensor or the one licensing the technology out agrees to not license it to anyone else to use and will not even use it themselves.
- A non-exclusive license is one in which the licensor can license any number of different licenses. You may have a non-exclusive license and your competitor may also have a non-exclusive license to the same technology.
- Somewhere in between these two is something referred to as a sole license, in which the licensor will not license any other licensees but has the right to continue using the technology themselves.
Let an IP lawyer Help Protect Your Intellectual Property