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 promotion services.

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 contact Attorney Louis Ventre, Jr.  He will try to give you an immediate response.