Intellectual property (IP) assets can be quite lucrative. In particular, licensing agreements can bring in a lot of money for intellectual property owners. However, licensing intellectual property comes with risks! Fortunately, these risks can be effectively mitigated through clear, detailed, and competent licensing agreements. Step One in achieving this is contacting an experienced business lawyer, who will identify your IP and the scope of usage rights.
To get the IP protection your assets deserve, reach out to an experienced attorney who cares. Contact The Weisblatt Law Firm today and learn how Attorney Andrew Weisblatt can help. Call (713) 666-1981 today.
Identify Your IP and the Scope of Usage Rights
There are various types of intellectual property, including:
- Trademarks
- Patents
- Copyrights
- Trade secrets.
The type of licensing language and protection you need in your IP licensing agreement depends heavily on the type of intellectual property you have. Once you identify the type of intellectual property to be licensed, you must determine the scope of usage and the licensee’s usage rights.
Decisions on the scope of usage and usage rights depend ultimately on the unique needs of each case. However, in all instances, an attorney experienced with IP licensing should guide businesses in how extensive the scope and usage rights of the license should be. It could be very costly for a business to extend too wide a scope of usage — this often happens inadvertently.
Define Ownership Rights vs. Licensee Rights
In all contracts, it is crucial to specifically define the rights and responsibilities of all parties involved. IP licensing agreements should also clearly define the ownership of the IP and provide explicit permitted uses of the IP to avoid problems.
IP ownership issues can be complex or simple. Simple licensing agreements between two parties relating to IP owned by one party typically lead to no major problems (as long as the drafting of the agreement is completed carefully and meticulously). However, multiple parties and joint development projects can muddy the ownership waters and cast uncertainty on the authority to license the IP.
Outline Term of Use and Termination
Most contracts require clear starting dates and a statement of the period in which the contract is valid. IP licensing agreements are no different. The language of the agreement must denote when the licensing agreement begins and ends. Both time and date must be included.
In some cases, a license may be granted indefinitely. However, licenses with indefinite or unusually long periods should contain language that permits either party to end the agreement.
Specify Fees and Payments
The licensing agreement must contain all aspects of the financial terms between the grantor and the licensee. Typically, the licensing fee is paid up front. However, depending on the type of IP, the royalties and residuals may factor into licensing payments.
Confidentiality and Non-Compete
Licensing agreements should contain non-compete and confidentiality clauses when the grantor needs to protect certain of their interests. In many cases, a grantor may require a non-compete to prevent the licensee from damaging its revenue stream. They might also require confidentiality to protect the divulging of sensitive business, scientific, or artistic information.
Quality Control and Branding
Valuable IP assets have a certain level of quality that must be maintained to preserve this value. License grantors typically include quality control standards in their licenses to protect the value and reputation of the IP to be licensed. Grantors may specify various requirements to preserve the integrity of the IP, such as:
- Type and quality of material to be used to reproduce the IP
- Type and quality of process and production to be used
- Packaging standards.
Grantors may also dictate branding guidelines in the license agreement. An agreement may permit a licensee to use a company’s brand in a certain way or even alter it. It may also prohibit its alteration altogether, depending on the needs of the grantor.
How Will Disputes Be Resolved?
No IP licensing agreement is complete without instructions on how to proceed in the face of disputes. Commonly found in these contracts are arbitration clauses, which require all disputes to be settled using binding arbitration instead of litigation. It may be beneficial to the grantor in some cases, however, to include exceptions to arbitration. An experienced attorney can provide the appropriate guidance on this matter.
The Weisblatt Law Firm works diligently to protect the assets and future of its business clients.
Speak With an Experienced Business Lawyer Who Cares
Your intellectual property assets are important and deserve to be protected. An experienced business lawyer will take the necessary steps to ensure that your property is safe and secure. Don’t hesitate to reach out for help.
Contact The Weisblatt Law Firm to get the legal protection and guidance you need for your IP assets. Call (713) 666-1981 today. Telephone consultations are free of charge, so don’t delay!
Attorney Andrew Weisblatt
Mr. Weisblatt has practiced continuously since becoming licensed in 1992 and has represented businesses ranging in size from one person start-up ventures to multi-national corporations employing hundreds of people in multiple countries. From 2005 through 2009 Mr. Weisblatt was in-house counsel and chief operating officer of a multi-national corporation in the steel products industry. That in-house position provided valuable insight into how businesses work and what they actually need from their lawyers – both in-house and outside counsel. Attorney Bio
