IP transfer contracts
Trade-marks
Names
Logos
Product packaging
Shape of product
Earned by use
Registration gives rights
Trade-marks
Key:
distinctiveness
Must link products or
services to a unique source
Patents
Prerequisites:
New
Useful
Inventive, industrial
Registration rights
Copyright
Protects “works”
books
movies
music
artwork
computer programs
Arises
automatically, but can be registered
Big Colorful Elephant is a painting by Anna Brigitta www.pixels.com
Trade Secrets
Recipes
Formulae
Customer lists
“Know-how”
Non-patentable
inventions
License agreement - parties
licensor and licensee
Licensee may be ‘customer’
License may be business contract between companies and other business entities
IP License Agreement
What IP rights are being granted by license ?
copyright, trade secrets, patents, know- how
if trade secrets - contract includes
confidentiality provisions
WHAT DOES THE LICENSOR GET?
License fees
Royalties
Cross-licenses
Google and Samsung Sign Broad Cross-Licensing Agreement
• 2014
Google and Samsung Electronics have signed a broad agreement to cross-license a range of each other’s patents, bolstering ties between the two main powers behind the global
Superiority of the Android operating system for
smartphones.
License Grant
What is the Licensee allowed to do?
Patents: make, use, sell
Trade-marks: use
Copyright: copy, publish, translate,
perform, modify, create derivative works
Trade Secrets: make, use, sell product made with trade secret
License types
Exclusive: only the Licensee
Sole: only the Licensee and the Licensor
Non-exclusive: multiple Licensees
scope of license
• Exclusive / Sole / Non Exclusive
• Field of application
• Territory
• Extent of rights
• When different rights are combined, the number of possible exclusive licenses is theoretically unlimited
Sublicense
• Typical term:
Licensee may grant sub-licenses
with the prior written consent of the licensor which is not to be
unreasonably withheld
Scope of license -examples
What is the Licensee allowed to do?
Territory: use the Licensed Trade-marks to promote, sell and distribute products in UK and the United States
Field: use the Licensed Patents to develop a therapeutic product to treat diabetes
Sublicense: modify the source code of the Licensed Software to create the Integrated Software and
sublicense the object code of the Integrated Software to end-users
the license worth
1000 euro --- 100 mln euro
Non-Exclusive ---Exclusive
Small Territory --- Large Territory Narrow Field ---Broad Field
“Use” --- “Exploit”
Technological --- Technological
Convenience Breakthrough
Royalty
Royalty is remuneration for quantity of use
• The greater the quantity of use, the greater the royalty
• The more sales, the greater the
royalty
License fees
Fixed
initial or upfront
annual
Milestones
Royalties (Fixed or Variable)
5pln per item sold
5% of “Revenue” per item sold
• “Net Revenue”
• “Sales Revenue”
• “Profit”
• “Allocated Price”
Licensee obligations
Reports
May be tied to payment of royalties
Periodic reports (monthly, quarterly, annual)
Certified company
Audit
License term
• Perpetual license
• Unlimited in time with the posssibility to terminate the contract upon termination notice
• Term specified in contract (expiry)
Term may be dependent on intellectual
property rights
IP Expiry
patent – 20 years
trade marks – 15 years (repeat)
copyright – author + 50 or 70 years related rights– 50 years
trade secrets -- indefinitely
License termination
Termination
By Licensor:
Failure of Licensee to pay royalties
Breach of Confidential Information
Failure to exploit
By Licensee
Invalidity of Patents
Infringement Claim
• Expiration is where the term of a license ends
• Term of x years
– Licensed rights end on the expiration of x years – Any further exercise of rights would infringe the IP
• Term until the expiration of a patent
– Licensed rights end upon the expiration of the patent
• Termination occurs unilaterally, one party terminating in response to a termination event taking place
