PAGE HARGRAVE Attorneys have experience of dealing with
a wide range of technology licences and other intellectual property
licence agreements, including design, copyright and trade mark
licences.
If you need advice on licence terms in manufacturing,
joint venture, distribution, collaborative R&D, franchise or
similar forms of agreement, we should be able to help. We can also
advise on
the possible relevance of UK and European
Competition law to your intellectual property licence agreements
and the issues involved in government and EU funded Research
and Technological Development (RTD) contracts.
EU
5th Framework Programme
- Model Contracts
- Ownership & Access
rights to Intellectual Property
- RTD IP
Issues from original IPR Helpdesk - see note above
- Consortium
Agreements from original IPR Helpdesk - see note above
For general guidance to assist managerial, technical and commercial
people who may be involved in negotiating intellectual property
licences, the following checklist may be helpful:
Points to deal with
in establishing a Heads of Agreement for Patent and Know-How
Licensing
Essential
1. The parties to the agreement.
2. The duration of the agreement. How it is to terminate.
3. The territory covered.
4. The intellectual property rights and/or confidential information
being licensed, and the extent of the permitted use.
5. The extent to which the agreement is exclusive.
6. The extent to which sub-licences are permitted.
7. Compensation to the licensor (royalty rates, lump sums, "options" or
up-front payments, minimum royalties, audited accounts, etc).
Effect of rejection of applications for intellectual property
rights or revocation or unenforceability of those rights.
8. The licensor's right of inspection and quality control.
Top of Checklist Essential Optional Secondary For Advisors
Optional (depending on
the case in question)
1. The extent to which the licensor or licensee must share know-how
or other confidential information, and how this is to be compensated.
2. Confidentiality of any shared know-how.
3. The extent to which the licensor's trade marks must be used.
The extent to which the licensor can approve packaging and promotional
material.
Top of Checklist Essential Optional Secondary For Advisors
Secondary (can be left
to resolve at the draft licence stage)
1. Who pays for obtaining and maintaining patents and other
intellectual property rights? Who decides which countries are
required?
2. Who pays for action against infringers? Who decides when
to take action?
3. The extent to which the licensor's own improvements must
be made available to the licensee.
4. The extent to which the licensee's own improvements must
be made available to the licensor. Who owns intellectual property
rights to them?
5. Liability to third parties (e.g. breach of product safety
laws, intellectual property rights).
6. Liability for taxation.
Top of Checklist Essential Optional Secondary For
Advisors
For discussion with advisors
1. The extent to which companies should be set up as a vehicle
for the licence, e.g. to limit personal liability or liability
to income tax.
2. The extent to which insurance, e.g. against third party claims
or infringement or unenforceability of the patents and other
intellectual property rights, may be required.
3. The extent to which valid and enforceable intellectual property
rights are likely to result. For the licensor: the likely costs
and delays involved.
Top of Checklist Essential Optional Secondary For Advisors
Please contact us directly for specific advice if required.
