Licenses & Contracts
At the start of a deal, everyone is happy and absolutely sure that everyone else is on the same page as them, and that nothing will ever go wrong. Surely just a virtual handshake on a video call is good enough to seal the deal, right?
Contracts, such as license agreements protect you when it inevitably arises that you and the other person didn't quite understand the same deal in the same way. We can help you with that before the problem arises, by helping you anticipate and decide in advance what the deal will look like.
License agreements are legally-binding contracts between two parties in regard to one party using the intellectual property of the other party. The license agreement defines the rights and obligations of each party. The subject matter of a license agreement can be one or more of a variety of different items of intellectual property, such as a single patent or an entire portfolio of patents, one or more trademarks, a copyright, or a trade secret (such as if you want to try to get a license to the secret formula for Coke, for example).
The license agreement is between the owner of the intellectual property - called the licensor, and the person desiring to have access to some of the rights in the intellectual property - called the licensee. Either one or both of the two parties can be either an individual person or a business entity, such as a corporation.
The license agreement describes the intellectual property that is the subject of the agreement, and certain other specific items of information, such as:
The scope of the license - Does the licensee receive exclusive use of the intellectual property, or is the licensee just one of many different people that can receive rights in the intellectual property.
The territory of the license - For example, does the licensee receive rights throughout the entire world, or just in a small area of town, measured in specific blocks, or something in-between.
The duration of the license - Do the licensee's rights under the license agreement persist for just a given length of time, and if so, how long is that period of time. At the end of the licensee period, does the license agreement automatically renew unless cancelled by one of the parties, or does it terminate. What happens upon termination of the license.
How much will the licensee pay the licensor for the rights received - And how are those payments structured. Is all of the compensation due in one lump sum at the signing of the license agreement, or is it payable in installments according to a specified time schedule. Does the licensee have to pay the licensor royalties based upon how much the intellectual property is used, such as how many items the licensee sells that incorporate an invention claimed in the licensor's patent.
In addition to these and other specific items, the license agreement should include all of the important - although perhaps somewhat mundane - elements of a contract: the items that many people might refer to as boilerplate. While these items might be mundane, they are always in a contract for a reason, and that reason is to protect you should something go wrong.
After the license agreement is drafted - how do you get the other party to sign it? That is the negotiation portion of the project. Which provisions in the contract can be modified? Which provisions should you hold fast on? We have extensive experience negotiating license agreements with some of the largest companies, and can help you get the agreement that you want.
We Can Help
If you want assistance with a license agreement or other contract - we can help! If you're knee-deep in trying to do it yourself and have run into problems - we can help!