Intellectual Property License Agreements

Many inventors and artists make money from licensing their intellectual property.  Many businesses license IP from artists and inventors.  By licensing their IP, artists and inventors earn revenue without the need to manufacture or market their creativity.  Businesses use licensed IP to develop new or existing businesses and improve the quality of their goods or services.  Intellectual Property License Agreements are an effective tool for identifying what rights and obligations each party has between the growing business and the artist or inventor who created the intellectual property.

Intellectual Property License Agreements are powerful legal tools that allow intellectual property owners to monetize their assets while enabling others to leverage innovative ideas, technologies, or creative works. These agreements establish the terms under which a licensee can use, reproduce, distribute, or modify the licensor’s intellectual property.

If a company is thinking of licensing its intellectual property, there are many considerations to keep in mind. The agreement outlines the appropriate actions each party is supposed to take with respect to the intellectual property and further summarizes what kind of legal action might be taken in the event that the licensee infringes on the licensor’s intellectual property. The license agreement is written in such a manner that an objective third party would be able to reasonably interpret and recognize the respective rights and obligations of the parties to the agreement.agreements between an intellectual property rights owner (licensor) and someone who wants to utilize an invention (licensee) in exchange for payment.  The payment is often is often in the form of a license fee or royalty payment.

Good IP license agreements include:

• Clearly defined scope of rights granted
• Exclusivity or non-exclusivity clauses
• Geographic and time limitations
• Royalty structures or other compensation models
• Quality control provisions
• Confidentiality requirements
• Breaches and Infringement by others
• Dispute Resolution

This is not an exhaustive list of terms. The licensing of intellectual property is a delicate process and must be treated as such. Because license agreements are usually long-term business partnerships, the licensor and licensee should also consider whether it is appropriate to enter into a non-disclosure agreement to protect and not misuse information it considers valuable, confidential, and not of the public domain.

By crafting well-structured IP license agreements, both parties can benefit.  Licensors can generate revenue streams without relinquishing ownership.  Licensees gain access to valuable IP to enhance their products or services. Innovation is fostered through controlled sharing of ideas and technologies.

An Assignment Agreement are different from a License Agreement. In an Assignment Agreement, the owner transfers some or all of their rights (assignor) to a purchaser (assignee).

As a law firm we can draft IP License and Assignment agreements including:

1. Non-Disclosure Agreement
2. License Agreement
3. Trademark Licensing Agreement
4. Copyright License Agreement
5. Franchising Agreements
6. Patent License Agreement
7. Trademark Assignment Agreement
8. Copyright Assignment Agreement
9. Trade Secret License Agreement
10. Music License
11. Publishers’ License Agreement
12. Photography License
13. Manufacture’s License
14. Brand Name License
15. Non-Disclsoure Agreements (NDAs)
16. Confidentiality Agreements
17. Non-Compete Agreements

In practice, many of these Intellectual Property License Agreements are combined into another type of agreement or formed as part of a much larger agreement which involved more than just the transfer of intellectual property. If a license is agreed upon, it is often good practice to register the agreement with the USPTO.   Many of these agreements involve a non-disclosure aspect and some involve a non-competition aspect. Additionally, some of these agreements may be involved in a cross-license agreements or in other situations, such as, during a merger or acquisition, or in the course of negotiating a joint venture.

A license or assignment agreement can offer you and your business, a wide variety of opportunities in growing your business or leveraging your creativity both within the United States and abroad. By ADVANCING THE POWER OF IMAGINATION, we can help you and your business leverage your growth, not only for today, but for the future.  Please contact us if you wish to discuss how an IP agreement may be good for you.