What Is an intellectual property license?
A license is essentially a contract or agreement and the basic rules governing the validity of contracts apply. You must have an offer and acceptance and both parties must give something of value (or refrain from doing something they have a legal right to do). The license must be entered into knowingly and voluntarily, all parties to the licensing agreement must have legal capacity, and the licensing agreement must be for a legally permissible purpose.
Does an IP license have to be in writing to be enforceable?
Maybe. Whether or not an intellectual property license must be in writing is generally governed by state laws. Some states require that contracts that cannot be completed within one year must be in written form. Nonetheless, though there may be no legal requirement to put a license agreement in writing, it will almost always be in your best interests to have the terms of your contract set forth in writing.
Can I license the same intellectual property to more than one party at a time?
Absolutely. You may enter into an “exclusive” license, which grants rights to only one party, or a “non-exclusive” license, which generally allows licensing to multiple parties.
Can I license a patentable idea without applying for and obtaining a patent?
As a general rule, you must either own intellectual property rights or share ideas in confidence in order to protect them from being copied. To license an idea, you must either have some intellectual property right to it, or you must have shared the information with a third party in confidence, typically through a trade secret or confidentiality agreement.
What terms and conditions should be part of an IP license agreement?
Provided it’s legal, you can agree to do just about anything in a license agreement. The fundamental issues that need to be addressed, however, include:
- A description of what is being licensed
- The length of time the license will be in effect
- The geographic territory covered by the license
- Whether or not the license is exclusive
- Any limitations on the use of the licensed intellectual property
- How the agreement will be terminated
- How you will be compensated for the use of the licensed IP
What is the typical form of payment under an IP license?
While a royalty per product sold is probably the most common form of remuneration, the parties to a license agreement can make other arrangements, such as a flat fee, an upfront payment with a smaller royalty, or a minimum royalty. An experienced IP attorney will help you determine a reasonable royalty.
Contact BLPLLC for Proven Guidance in Intellectual Property Licensing
At BLPLLC, we have been extensively involved in a wide range of IP licensing matters for more than two decades. We will handle all matters necessary to help you secure a licensing agreement for your patent, trademark or copyright, including the negotiation of terms, the review of any proposed agreements and the preparation and execution of the final contract.
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