Licensing2019-06-04T06:25:46+00:00

Licensing

Our attorneys have prepared negotiated and prepared hundreds of licenses for software, electronics, and biotechnology clients, and has often lectured on intellectual property topics. Our experience in litigation and patent prosecution informs our licensing practice and ensure that we have considered the consequences of an agreement that has come into conflict. The most important thing to keep in mind in drafting an agreement is that the purpose is to ensure that there are no outstanding matters over which there can later be disagreement and that all matters are sufficiently clearly laid out that even in the case of a dispute, the outcome is dictated by the agreement.

Foresight

In order to draft a good license agreement, the attorney needs to have 20/20 vision into the future. That is, it is only by being able to anticipate the areas that are likely to come into dispute ahead of time that the attorney can prepare the agreement in a way that ensures that any such dispute is clearly resolved by the agreement without the need for litigation. Litigation over a license agreement is nearly always the result of a failure to anticipate the potential for a dispute over the issue in contention. While nobody can truly know the future, experience is the best way to anticipate what might happen in the future. By having experienced a significant number of disputes and learning from those experiences how to anticipate and avoid them in the future, our attorneys can provide the best safeguard to keep our clients from having to ensure the expense and inconvenience of litigation.

Understanding the Technology that Underlies the License is Crucial

Since our attorneys have a strong understanding of the technology that our clients are licensing, they can draft the agreement to clearly and concisely define the nature of the licensed technology, the scope of the license and any limitation on the grant of the license. These are important components in many license agreements. Often times, a license agreement will provide only some of the rights that the licensor might confer on the licensee. In such cases, it is critical to avoiding misunderstandings and costly litigation that any such limitations be very clearly laid out and understood by both parties to the agreement. Such limitations can include limits on the field of use, the geographic area in which otherwise infringing products/services can be provided, limitations in time, pricing structures, including the way in which royalties might be calculated (i.e., what the base is from which a royalty is to be calculated), grant back clauses that provide rights back to the licensor, etc.