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LICENSE AGREEMENTS
Patent attorneys negotiate and work out license agreements.
By using a license agreement, the licensor can grant the licensee the usage rights for the object subject to protection. In return, the licensee pays a license fee. The license agreement is a type of contract that strictly follows liberty of contract guidlines. A license agreement should have or take into account the following:
The preamble: the previous history of the agreement and the implicit purpose of the contract (what do the partners want?)
Clarification of definitions:
- subject matter of the agreement (what is the license fee paying for? What is the licensee allowed to do?)
- legal validity, now and in the future
- know-how for the agreement (define and document)
- licensed territory
The license:
- exclusive or simple license; what is the license for (production or sales)?
- exceptions, limitations
- obligation to exercise, rights to grant sub-licenses?
Further liabilities of the licensor:
- briefing, advising
- providing the know-how
- further cooperative work, trademarks, advertisement and marketing
- options for new uses, improvements
Remuneration:
- lump sum payment when the contract has been signed (are they entitled to do so?) - ongoing payments = license fees (percentages, for example), billing, accounting, monitoring
- “most-favored treatment” (if there are multiple licensees)
- minimum royalty (how high, starting when)
Protective rights:
- ongoing payments – who pays?
- sharing information about infringements, conduct of a case – liability for business utilization, validity, inexistence of third-party rights?
- duties of the protection rights, how does the mutual agreement look?
Time period, expiration of the contract, other:
- time period
- cancellation, cancellation deadline
- exclusion of inefficacy if individual clauses are invalid
- provisions for and against assignees
- applicable law, jurisdiction
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