LICENSING AN INVENTION,
TRADEMARK OR COPYRIGHT
Licensing? A license from an owner of a patent
application, patent, trademark or copyright conveys some of the
rights in the intellectual property to the licensee. It, therefore,
permits the licensee to use patent rights in an agreed way, and usually in
exchange for a fee or royalty.
An assignment, on the other hand, conveys all of the rights of
ownership of the patent application or patent. It transfers ownership from
the owner to the assignee.
Attorney Louis Ventre, Jr. represents owners of intellectual property
as licensors, potential licensees, assignors and assignees. Attorney Louis
Ventre, Jr. can prepare the necessary legal documents and can assist in
the negotiation of terms with the other party. In either case, he can help
you decide on the terms that promote your interest. Attorney Louis Ventre,
Jr. can also provide insight into the potential for future difficulties of
terms recommended by the other party. The Law Firm of Louis Ventre, Jr.
does not offer invention
Fees? Attorney Louis Ventre, Jr. charges
depending on the complexity of the case and will provide an hourly or
fixed-price quote upon request. If all you are seeking is a draft
licensing document to propose to the other party, your fee could be as low
as $500. Typical fees range from $500 to $5,000. An assignment
document for a single inventor costs $80 plus the recordation fee of $40.
Typical Licensing Provisions? License agreements
will typically define the parties and their interests and goals, define
the property involved, specify the grant (field of use, non-exclusive,
etc.), state the consideration (royalties and limitations) and how it is
determined, authorize or restrict sublicensing, define indemnification,
make representations, warranties, and disclaimers, identify responsibility
for maintaining patent validity, define what happens on discovery of
infringement events, authorize or restrict succession rights, define a
period or term, state the conditions under which the license may be
terminated, identify the circumstances when licensor approval of products
is required, and specify the procedure and contacts for notices.
Other Legal Considerations? Antitrust issues may
be involved in licensing patents and other intellectual property when, for
example, provisions are included involving licensees using or selling
competing products, requiring licensee's use of an unrelated product,
restricting licensee from competing with licensor, controlling licensee's
product prices, limiting licensee's output, restricting use or development
of improved or competing technology, or attempting market coordination.
This is not a black and white issue, but involves an analysis of harm to
competition. An important consideration is whether the restraint is
reasonably necessary to achieve procompetitive benefits that outweigh its
anticompetitive effects. The potential for competitive harm depends in
part, on how much of the competitive market is involved. Some other
factors include the degree of concentration in, the difficulty of entry
into, and the responsiveness of supply and demand to changes in price in
the relevant markets. If you want to learn more about this, the United
States Justice Department publishes a somewhat lengthy discussion of
antitrust guidelines at http://www.usdoj.gov/atr/public/guidelines/ipguide.htm.
I have also made ipguide.pdf
available for download.
What is a Grantback? A grantback is an
arrangement under which a licensee agrees to extend to the licensor of
intellectual property the right to use the licensee's improvements to the
licensed technology. This is an antitrust concern, if there is potential
to substantially reduce the licensee's incentives to engage in research
and development and thereby limit rivalry in innovation markets. A
non-exclusive grantback, which leaves the licensee free to license
improvements technology to others, is less likely to have anticompetitive
effects. If a grantback is sought by the licensor, care should be taken to
avoid circumstances that could create an antitrust issue.
Authority to Act? One final formality, the
conveying party must own the property rights sought to be conveyed, should
be current in legal status, and their representative who signs must be
legally authorized to act on their behalf. These formalities are important
to liability and enforceability and should be looked after.
Contact The Law Firm. Your first step is to
Louis Ventre, Jr. He will try to give you an immediate response.
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© 2004 Louis Ventre, Jr.
This file last modified 07/09/11.
This page is http://www.lventre.com/licensing.html.