When the licensor give someone a non-exclusive license, it gives the licensee permission to exercise the right in question, but it also reserves the right to continue exercising it by the licensor himself and to authorize others to do so.
However, when the licensor grants someone an exclusive license, it promises the licensee and only the licensee may exercise the right that is so licensed. Term or duration of the license Term or duration of a contract may be structured in different ways.
The simplest and most common method to structure such a term is by merely assigning a certain fixed period of time expressly in the agreement. However, the term may also be perpetual, that is, the term continues without end. In many cases the parties to the agreement may choose to agree upon certain terms that may provide certain amount of flexibility to both parties.
This can be done, when the parties agree a upon an initial term for the license at the end of which, the parties may opt to continue the term further or after giving prior notice, may choose to end the term of the agreement. An evergreen term, is one that renews itself automatically, until one of the parties, on advance notice, chooses to terminate it.
However, the licensee must ensure that the term of the license should never exceed the actual term of protection granted to the intellectual property right. Either party may cancel the agreement if the other party is in material breach thereof by providing written notice of breach to the other party describing the nature of the breach. If the party receiving such a notice does not rectify its breach within 30 days, the agreement shall automatically terminate, this process is called cancellation.
Following such termination or cancellation of the agreement, all confidentiality obligations, obligations to return materials, limits on liability, and dispute resolution provisions shall survive and continue in full force. Confidentiality Though confidentiality is implied in contracts of such nature, it is prudent and safe to have a clause that restricts use and disclosure of such information that is confidential.
The use should be limited to ensure that the recipient is not deriving additional benefits from the disclosure of the confidential information. Warrantees A warranty is an undertaking or stipulation that a certain fact in relation to the subject of the contract is or shall be as it is stated or promised; and refers to an agreement to protect the recipient against loss if the fact is or becomes untrue. Implied warranties are promises that are so fundamental to the transaction, that the promises should be assumed to exist in every contract unless the parties clearly express a contrary intent.
Such a provision may also impose liability on the indemnifier to defend the indemnity holder against any legal actions that may arise due to such a situation. In a licensing transaction, each party usually indemnifies the other for liability relating to its own breaches of any representation, warranty, or promise. The provisions of the license agreement may either authorize a licensee to raise independent infringement actions against third party infringers on behalf of itself or the licensor or require the licensor to sue the third party infringer in cases of infringement claims where third parties are infringing the licensed intellectual property.
Likewise the provision may also require the licensor to defend the licensee in cases where the licensed intellectual property infringes the rights of others. The provision usually creates a duty on both parties to provide notice if such party has knowledge of any third party infringement on the licensed intellectual property or when such licensed intellectual property infringes the rights of a third party.
Special provisions for trademark license agreements Trademark licensing can be a lucrative business, if effectively managed. A Trademark owner licensor can transfer his rights with respect to his trademark either by way of assignment or by licensing. Trademark licensing was considered to be impossible at one time given that one of the functions of a trademark was to indicate source. However, trademark licensing became acceptable where the licensor remained in control of the nature and quality of the goods or services sold in association with the trademark.
The use of the trade mark permitted as above shall be deemed to be use by the proprietor of the trade mark for the purposes of the Act or any other law. These positive feelings that are invoked in the mind of the consumer through such a mark are called goodwill. Therefore, protecting such goodwill is definitely fundamental to the owner of any trademark. Hence it is absolutely vital for the licensor to include, through a provision, a formal renunciation of goodwill by the licensee.
He should also possess similar goals, effective support teams and management infrastructure, financial stability and distribution channels that are commensurate with the brand. Apart from these two important provisions, the licensor should include such provisions that ensure that the mark remains associated with his own goods or service and make sure that the licensee does not misuse the mark in such a way that certain modifications are made to the mark to enhance his own goodwill at the detriment of the licensor.
The Research Handbook on Intellectual Property Licensing explores the complexities of intellectual property licensing law from a comparative perspective through the opinions of leading experts. This major research tool analyses the features of specific types of licensing agreements and also addresses other practical issues which apply across different types of licensing transactions, such as the treatment of licensing in bankruptcy and the use of arbitration for solving licensing disputes.
The Handbook ultimately provides a scholarly contribution to the development of global intellectual property licensing policies. Including transversal and comparative analysis, this Handbook will appeal to intellectual property licensing practitioners, lawyers and intellectual property and contract law academics.
Intellectual Property Licensing: Forms and Analysis is a comprehensive collection of forms, checklists and agreements designed to help attorneys deal with virtually any intellectual property licensing issue. Full of valuable tips, techniques, illustrative real-world examples, exhibits, and best practices, this handy and concise paperback will help you stay up to date on the newest thinking, strategies, developments, and technologies in licensing intellectual property.
Order your copy today! Gomulkiewicz Published by Wolters Kluwer; 3rd edition J. Gomulkiewicz Hardcover Hardcover — January 1, out of 5 stars 2 ratings See all formats and editions.
Why, then, do companies and individuals spend scarce resources to procure these intellectual property assets? The answer, in large part, is licensing.
This major research tool analyses the features of specific types of licensing agreements and also addresses other practical issues which apply across different types of licensing transactions, such as the treatment of licensing in bankruptcy and the use of arbitration for solving licensing disputes. The Handbook ultimately provides a scholarly contribution to the development of global intellectual property licensing policies. Including transversal and comparative analysis, this Handbook will appeal to intellectual property licensing practitioners, lawyers and intellectual property and contract law academics.
This book serves as an introduction and guide to reviewing, writing, and negotiating most of the licenses and agreements necessary to turn intellectual property into profit. Licensing Law: Theory and Application is a surprisingly accessible book that describes the applications of all aspects of licensing law in business. Real-world context gives students a framework for understanding what their clients will want to accomplish and why. Clear instruction, followed by a series of hands-on problems and drafting exercises, introduce students to the craft of advising clients and drafting a license.
A comprehensive overview of intellectual property law, this handbook will be a vital read for all invested in the field of IP law.
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