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Intellectual Property and Licensing Training Hub
Protect your company's valuable assets by learning to manage and mitigate risks through effective intellectual property clauses and licensing terms from our courses, checklists, and other resources.Â
Sign up for our IP and Licensing Essentials courseÂ
Need to learn IP and licensing concepts or refresh what you know? Take Laura Frederick's course covering best practices and key concepts. You'll be confident drafting these critical provisions. Our two-hour on-demand course is just $195, or $147 for How to Contract members. Find out more about the IP and Licensing Essentials course.
Download our free checklist for IP license grant clauses
A checklist for drafting an IP license agreement helps ensure that the full range of issues is covered, and that risk is minimised. The checklist helps with the core issues (sublicensing, exclusivity, transferability, IP rights including copyright, trademark and patents), enabling legal professionals to draft IP licences as clearly, enforceably and effectively as possible.
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Check out our Quick Take one-pagers to learn more about intellectual property provisions and concepts. You can review the longer version online or download the free one-page PDF summary.
Watch these IP training videos
"Why IP Statutory Rights Matter: Avoiding Costly Mistakes in Contracts"
In this video, Laura Frederick emphasizes the critical importance of getting the IP statutory rights right in your contracts. While getting caught up in IP indemnities and warranties is easy, the real danger lies in mishandling statutory rights related to IP licenses or assignments. There are severe risks associated with IP infringement, including statutory damages, customs actions, and even potential criminal liability.
"Sublicense vs. EULA: Choosing the Right IP Licensing Strategy"
Laura Frederick explains the two main approaches to IP licensing: sublicensing and end-user license agreements (EULA). Understanding these frameworks is crucial for managing risk and maintaining control over your intellectual property. She explains how we have to evaluate the impact of privity on our ability to enforce rights against end users. We have to take into account factors like financial strength and the type of IP involved.Â
"Do you know about implied IP licenses?"
Laura Frederick talks about implied intellectual property licenses, how they can occur, and the risks they create. Courts in the United States sometimes apply equity to create an IP license even if there is no formal documentation or contract in place, and even if the term "license" is never explicitly used. This situation can lead to ambiguities regarding various rights: the terms of usage, expiration dates, transferability, and assignment of the license.Â
Check out these IP tips and cartoons from Laura's book
How to Define IP Rights
Consider these things as you draft your IPR definition. First, you may be stuck with the list even if it omits something. Some contracts define IPR to include a long list of things, getting into a lot more detail than just patents, copyrights, trademarks, and trade secrets.When we include a long list of things in a definition, we signal to the court or arbitrator that we consider this list is the entire meaning of the term. This approach may leave them assuming that anything omitted was intentional. READ MORE
The Intangible Nature of IP
Let’s talk about the intangible nature of intellectual property (IP). Everyone who works on contracts with IP provisions needs to understand how IP works. One of the hardest things to get our heads around is that property rights are intangible. IP owners have rights to something that has no physical properties. It isn't like property rights to land, where you can pick up a clump of dirt and say, “I own this.” It isn't like owning a car or a house, where you can see and touch what you own. READ MORE
Avoid Co-Ownership of Patents and Copyrights
I cringe when I see this approach in commercial contracts because it creates so many problems. The beauty of owning something is that it is yours to do with as you want. You can keep it, sell it, let others use it for payment, whatever. When you co-own patent and copyright rights, you don't have that freedom. You are beholden to your co-owner in some significant ways. READ MORE
Ownership of IP Rights Created During the Term
One common debate in contract negotiations is which party should own intellectual property rights resulting from work during the term. Most customers want to own the rights. They justify this demand with arguments such as "we are paying for it, so we should own it," "we don't want you licensing this innovation to our competitor," and "we need ownership to ensure we have rights even if you are sold or become insolvent." Vendors may insist that they own the rights. READ MORE
Irrevocable IP Licenses
Let's talk about irrevocable intellectual property (IP) licenses. We use the license grant provision to shape what permissions the licensor grants to its licensees. One of the concepts included in many licenses is whether the license is irrevocable. If the license grant identifies it as being irrevocable, the licensor cannot terminate even if the licensee breaches the terms. The licensor's only option is to sue for damages. There are other important concepts to think about when drafting an irrevocable license. READ MORE
Deciding How to Structure IP Sublicenses
Owners of intellectual property (IP) may permit third parties to use the owner's IP. In the simplest situation, a licensor grants the right to the licensee, and it ends there. But in some cases, the licensor and licensee want the licensee to offer licenses to that IP to third parties. In these cases, the licensee is a middleman between the licensor and those end users. There are two main ways to set up this arrangement. One way is for the licensor to directly grant the license to those end users through an End User License Agreement (EULA). READ MORE
Always Include Quality Standards in Your Trademark License
If your contract includes a trademark license, you also need to require that the goods and services associated with the trademark meet the licensor’s quality requirements. A license without quality requirements is called a naked trademark license. Naked trademark licenses are risky for trademark owners. Trademark laws allow licensing but require the owners to exercise control over the quality of goods and services associated with the licensed trademarks. READ MORE
Identifying the Licensor
Who is granting the license seems straightforward. It can be, but sometimes it gets more complicated. Here are some examples of this clause: “Seller grants...,” “Seller and its Affiliates grant...,” or “Seller, on behalf of itself and its Affiliates, grants...” Check for these four things about the licensors in your contract. First, are there representations and warranties about the licensors’ authority to grant the license? Make sure the rep and warranty specifically cover all the licensors. Second, are all the licensors signing the agreement? READ MOREÂ
Common IP Assignment Problems
I often see intellectual property provisions that say something like, "Buyer owns the intellectual property that results from the Seller's services under this Agreement." This approach falls short in a few ways. First, it doesn't say the vendor assigns the rights. It doesn't even include an agreement to assign in the future. It is just a statement. Second, the statement refers to the intellectual property (the software code), not the intellectual property rights (the copyright covering the code). Don't do that. READ MORE
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