Constructing the proper IP license agreement

On behalf of Kaufhold & Dix Patent Law posted in Patent Law on Tuesday, December 5, 2017.

Licensing of any bit of intellectual property is not usually a matter of just drawing up a document and signing on the dotted line. Those with skill in this area of law know that coordinating across all the elements of IP law – patents, trademarks, and copyrights – requires special choreography. The presumption behind all these facets is that they deal with unique creative elements and any transaction undertaken to bundle things together is unique as well.

To craft a sturdy licensing agreement, one has to acknowledge the form and function of the individual materials. For example, patents secure and protect ideas, the expression of the ideas is protected by copyright, and trademarks seek to distinguish one good or material source from all others. Initiatives to protect the value of unique business information or ways of doing things, falls under trade secrets.

Combining the elements

To be confident you get the proper mix of the myriad IP ingredients for a working licensing agreement, you need to be asking the right questions – framed by the specific business goals you are trying to achieve. That calls for a great deal of customized planning. That said, here are three questions that some legal observers agree are critical to every deal:

1. What specific IP rights are needed to achieve particular business goals? Seek what you need, not what you don’t. The more specific you can be in defining the licensed rights the better.
2. What rights are not needed? This might seem counter-intuitive, especially in light of question 1. But the posing of it ensures that time is not wasted on fruitless discussion or negotiations.
3. How solid are the protections on the rights you seek? Rights can lapse if not properly maintained. If the holder of the rights hasn’t done the necessary preservation work, the whole license could be jeopardized.

A careful read of this post should leave you with an appreciation that licensing of intellectual property is not something to do by template legal