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Understanding the Nature of the IP is Key to Drafting IP Transfer and Licensing Agreements

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A thorough understanding of the IP involved in a transaction is an essential first step to drafting an IP transfer or licensing agreement. The nature of the IP will determine the issues that need to be addressed, and will assist in determining the appropriate scope of the licence. It will also determine the structure of payment and/or royalty provisions.

Careful attention should be given to the rights the licensee wishes to obtain, and the rights the licensor wishes to retain when drafting the grant of the license. The business objectives and outcomes of both parties will help to determine the scope of the license. Considerations include the use granted, territory, term, exclusivity, revocability, sublicensing, termination etc. When deciding if the licence is to be exclusive, non-exclusive or sole, particular attention should be given to ensure that the language chosen is consistent with applicable statutory definitions, and that the agreement is enforceable according to the intentions of the parties.

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Take away:

  • Before drafting an IP transfer or licensing agreement, the drafter should have a thorough understanding of the nature of the types of IP to be covered by the agreement.

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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FRAND Technology May Alter The Bargaining Power of Licensors

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Under US patent law, a FRAND technology (fair, reasonable, and nondiscriminatory patent licensing) is standard and essential to the ongoing operation of a particular product. Thus companies that own such patents are not allowed to “gouge” licensees. Licensors should consider whether or not the license they are granting covers a FRAND technology, because if so, the licensor will be expected to provide its product or component to another company on fair and reasonable terms. These terms might differ significantly from what would otherwise be standard in the marketplace. Licensees will also want to know whether the technology they seek to use is covered by FRAND. This will place them in a stronger bargaining position.

This article concerns a lawsuit between Apple and Ericsson. The companies were in disagreement about whether the Ericsson LTE technology in Apple’s products is essential to cellular operation, and were in dispute over the fairness of a FRAND license extension Apple was expected to sign.

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Take away:

  • It is important for both licensors and licensees of patented IP to determine whether the IP is standard and essential to the ongoing operation of a particular product, and thus covered by the FRAND provisions of US patent law.

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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IP Transfer Agreements Should Carefully Define the IP to Be Transferred

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Who among us has not been tempted to enter a contest to win fabulous prizes?

For businesses who are in the market to collect data, photographic material and other IP at a very low cost, contests provide an almost endless source of material, provided that the rules are drafted carefully to transfer every conceivable type of possible IP to the contest organizer.

This article is about the Official Rules and Regulations of the Flip-Flop Friday contest sponsored by CTV Regina. This contest was about submitting photos depicting feet in flip flops. The Rules governing the contest are extremely sophisticated. For example Rule 7 is about the representations and warranties regarding the photos that entrants are presumed to make by entering the contest: by entering the contest, the entrants represent and warrant (among other things) that the photos they submit are their own original work and that they do not infringe on any third party IP rights. Under the Rules, all IP of every type in the photos is transferred to the contest organizer absolutely to use at their discretion forever. Rule 11 defines the IP (excluding the photos) owned by the contest sponsor and or its affiliates.

IP is defined as including, but not limited to trade-marks, trade-names, logos, designs, promotional materials, web pages, source codes, drawings, illustrations, slogans and representations.

Read the article here.

Take away:

  • IP Transfer Agreements should be drafted carefully to cover exactly what the parties intend to transfer. It is unclear whether extremely broad transfers, such as those often used in contest rules, are completely enforceable.

 

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This article is provided for informational purposes only and does not create a lawyer-client relationship with the reader. It is not legal advice and should not be regarded as such. Any reliance on the information is solely at the reader’s own risk. Clausehound.com is a legal tool geared towards entrepreneurs, early-stage businesses and small businesses alike to help draft legal documents to make businesses more productive. Clausehound offers a $10 per month DIY Legal Library which hosts tens of thousands of legal clauses, contracts, articles, lawyer commentaries and instructional videos. Find Clausehound.com where you see this logo.

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