IP Licensing & Agreements
Licensing impacts all areas of intellectual property law including patents, copyrights and trademarks.
Our attorneys have negotiated and prepared licensing agreements for a wide range of technologies and industries in support of parent company/affiliate arrangements, franchise agreements and settlement agreements arising from litigation matters. Such licensing agreements have included equity interests and royalty provisions such as sliding rate structures and lump sum payments depending on the particular circumstances agreed to by the licensor and licensee.
In formulating licensing agreements, one must consider the scope of the license grant, such as the right to sell, manufacture or use patent rights; the geographic scope of the licensed rights; the exclusivity or non-exclusivity of the grant; and the right to sub-license. The license agreements also define material breach of the agreement and the consequences of such a breach.
Litigation provisions are also incorporated into our licensing agreements, for example, by including clauses regarding the right to initiate an infringement law suit and the responsibilities and duties of the licensor and licensee regarding such litigation.
Our attorneys have used license agreements as a means for strengthening our clients' global Intellectual Property portfolio by negotiating licenses with entities in foreign countries where the client may not otherwise have Intellectual Property rights or for mitigating the risk of hostile third party action which may have been uncovered as part of due diligence investigations.
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