what type of attorney do i need for a licensing agreement

Do I need an attorney to draft a license agreement?

A licensing agreement is a written contract that gives you permission to use another party's property under a certain set of conditions. The two parties involved in this agreement are the licensor (the one allowing permission) and a licensee (the one gaining permission).

When do you need a licensing attorney?

Intellectual property licensing lawyers create licensing contracts for individuals or businesses that have created original works, and they will help maximize the revenue gained from licensing these products. These attorneys can also help you defend allegations of copyright infringement and the subsequent litigation.

How to make a licensing agreement?

 · Parties are only granted rights to sell, produce, distribute, or use of protected material through a licensing contract. An intellectual property attorney can assist you in drafting a legal licensing agreement and avoid future disputes. Gain more legal insights from LegalMatch's online law library today!

Do I need an attorney for Intellectual Property licensing?

 · A licensing agreement is a contract between two parties (the licensor and licensee) in which the licensor grants the licensee the right to use the brand name, trademark, patented technology, or ability to produce and sell goods owned by the licensor. In other words, a licensing agreement grants the licensee the ability to use intellectual ...

How do you negotiate a licensing agreement?

How to Negotiate a Licensing Agreement Like a ProDo your homework. ... Start with a term sheet. ... Manage your expectations. ... Be patient. ... Have a win-win attitude. ... Don't lose your sense of humor. ... Remember to hold something back. ... Put yourself in their shoes.More items...•

What are the 3 types of licensing agreements?

Practitioners and licensing executives often refer to three basic types of voluntary licenses: non-exclusive, sole, and exclusive. A non-exclusive licence allows the licensor to retain the right to use the licensed property and the right to grant additional licenses to third parties.

How do you obtain a license agreement?

License Agreement TipsFirmly establish ownership. A good contract should clearly state what rights are being granted pertaining to the intellectual property in question. ... Do not overlook definitions. ... Define the royalty system. ... Explain the quality assurance monitoring process. ... Be aware of government regulations.

Who are the parties involved in the licensing agreement?

Licensing agreements are legal contracts that are written between two parties—a licensor and licensee.

What should I look for in a licensing agreement?

Important Licensing ConsiderationsPerformance Requirements. Like franchise agreements, most licensing agreements come with performance or diligence clauses. ... Exclusivity Clauses. ... Affiliates or Sub-Distributors. ... Termination Clauses. ... Product Liability.

What is a typical licensing agreement?

In a typical licensing agreement, the licensor grants the licensee the right to produce and sell goods, apply a brand name or trademark, or use patented technology owned by the licensor.

How important is the licensing agreement?

An effective licensing agreement is the most effective solution for protecting your intellectual property. A licensing agreement allows owners of intellectual property to authorize third parties to use, alter, or resell the property for a mutually agreed-upon price, without transferring ownership to the third party.

What activities does a license agreement restrict?

What type of activities does a license agreement restrict? You do not have the right to copy, loan, borrow, rent, or in any way distribute programs or apps. Doing so, is a violation of copyright law; it is also a federal crime.

What are the advantages of licensing?

Some of the advantages of licensing include the following.Income without overhead. ... Potentially better marketing. ... Enter foreign markets more easily. ... Diffuse conflicts. ... Risk of IP theft. ... No guarantee of revenue. ... Unintended competition. ... Risk of diminished reputation.More items...•

How do you price a licensing agreement?

The first rule for setting the royalty rate for a license to use intellectual property is the “25 percent rule.” This rule provides that the royalty rate a user of another's intellectual property must pay to the owner of that intellectual property is 25% of the operating profit of that product.

What are the disadvantages of licensing?

Disadvantages of LicensingThe licensor having loss of control of their intellectual property.The licensor having to depend on the skills, abilities, and resources of the licensee to generate revenues.The licensor being exposed to intellectual property theft by the licensee.

What do licensing royalties typically cost?

Although rates ranging from 3% to 8% of net sales are common, each licensing agreement is unique and the only consensus that matters with respect to royalty rates is the one that occurs between the licensor and the licensee as a result of negotiations.

What is a license agreement?

Licensing is assigning "limited use" rights for property. The rights given by the agreement need to be broad enough so licensees are interested in the deal, but narrow enough that you do not give permanent unrestricted control over your asset.

What can a licensor do?

As a licensor, you can file a lawsuit to enforce your rights and ask for remedies such as an injunction and monetary damages. A court could award you "actual damages," which include the amount you lost because of infringement, or you could seek the profits the defendant gained by infringement.

What rights do you have to source code?

rights to source code, if software is involved. acceptance, testing, and training procedures. warranties you make with respect to your intellectual property (e.g., warranting the validity of your patent) limitations on the licensor's liability.

What is the first issue to consider when licensing?

One of the first issues to consider is the license's scope. Do you want the licensee to have unrestricted use of your intellectual property? Or can the licensee use your intellectual property only in certain ways (such as for noncommercial purposes) for a limited amount of time (for instance, for one year)?

Do licensing agreements need to be long?

A licensing agreement does not need to be long or complicated. Indeed, an agreement that is straightforward is more likely to be understood by both parties, and ultimately enforceable by courts.

Is copyright a federal or state law?

And trade secrets are often not "filed" at all, but are nevertheless still protected by a combination of state and federal law.

What is a license for software?

Licenses protect proprietary rights in areas such as software and other computer products. You can use a license to give someone permission to use your intellectual property in a certain way for a certain time for a certain price.

What a Licensing lawyer can do for you

A licensing attorney can create the legal framework to protect your ownership of your patent, trademark, or copyright. Intellectual property licensing lawyers create licensing contracts for individuals or businesses that have created original works, and they will help maximize the revenue gained from licensing these products.

Why hire a Licensing attorney

If you are a copyright, trademark, or patent owner and someone wants to use, for example, your artwork, trademarked slogan, or patented invention, you may benefit from the services of a licensing attorney. Licensing attorneys write contracts that protect your intellectual property rights.

Did you know?

The top 5 receiving offices for patent applications in 2010 are as follows: 1. United States 2. China 3. Japan 4. Republic of Korea 5. European Patent Office

Why is it important to have a lawyer for a licensing agreement?

Therefore, experienced licensing agreement lawyers are important because they will have knowledge of the many legal issues involved. A lawyer will be able to assist with the negotiation, creation, and reviewing of a licensing contract agreement.

What can a lawyer do for a license?

A lawyer will be able to assist with the negotiation, creation, and reviewing of a licensing contract agreement. They can also ensure that your interests are fully represented and protected in the agreement. A lawyer can also represent you during any court proceedings that result from the licensing agreement, if necessary.

What happens if you breach a licensing agreement?

A breach of a licensing contract may also expose an individual to civil liability. Many breach of contract claims create great financial losses for the non-breaching party. Therefore, a successful breach of licensing agreement claim may result in a large damages award for the non-violating party.

What is licensing law?

Engages in the unauthorized transfer of rights to a third party. Unlike other areas of contract law, licensing law is highly regulated by both federal and state law.

What is another remedy for a breach of contract?

Another remedy may be an injunction or other equitable remedy. A court may issue an injunction instructing the breaching party to cease the activity that is causing the infringement.

What are the remedies for a violation of a licensing agreement?

Violations of the terms of a licensing agreement may result in the following contract remedies: Monetary damages; Injunction and other Equitable Remedies; and/or. Remedies prescribed by the contract itself. Monetary damages occur when the non-breaching party sues to recover their losses associated with the breach.

What is included in a licensing contract?

The structure of licensing contracts usually includes: The identification of the material to be used, such as a logo, trademark, and/or copyrighted artwork; Any exclusivity restrictions; Any financial arrangements; and. Other clauses necessary for inclusion. Exclusivity restrictions include:

What is the difference between a licensee and a licensor?

A licensing agreement is a contract between a licensor and licensee in which the licensee gains access to the licensor’s intellectual property. The party providing the intellectual property is called the licensor while the party receiving the intellectual property is called the licensee.

What is the meaning of "licensor" in a license?

The licensor having loss of control of their intellectual property. The licensor having to depend on the skills, abilities, and resources of the licensee to generate revenues. The licensor being exposed to intellectual property theft by the licensee.

What are the advantages of a licensee?

Advantages to the licensee include: The licensee gaining access to established intellectual property and being able to enter the market more quickly. The licensee not having to pool resources to conduct research and development to develop their own products or services.

What are the three types of licensing agreements?

Intellectual property licensors use three main types of licensing agreements. They are: Exclusive license: A licensee who gets this license is the only one who can use the intellectual property. Even the licensor cedes rights to the license during the length of the agreement.

What is a license agreement?

A licensing agreement, or license agreement, is a deal between the owner of a patent, brand, or trademark and someone who wants to use the patented or trademarked goods and services. The license grants permission to the licensee and includes stipulations. The licensee must honor these guidelines. One of the rules in the licensing agreement is usually a financial arrangement to pay for use of the license.

How much is royalty on a license?

The royalties from a licensing agreement are usually 6-10 percent. It does vary depending on factors like the quality of the intellectual property and the licensee's experience and need. Some licensors don't expect royalty guarantees in contracts. Others demand them.

What is a sole license?

Sole license: The licensee has the sole right to the licensing of the intellectual property. The licensor also keeps the right to use it. This is similar to an exclusive license. It's more favorable to the licensor, though. This type of license usually costs more than a non-exclusive one but is cheaper than an exclusive license.

Which license has the greatest number of licensees?

The licensor also has the option to sell it to others, though. Non-exclusive licenses have the greatest number of licensees. That's because many licensees have the right to use the same intellectual property. Sole license: The licensee has the sole right to the licensing of the intellectual property.

What is NDA in licensing?

Confidentiality: Most companies use some sort of non-disclosure agreement (NDA) these days. When they don't, the licensing agreement needs this clause. The confidentiality section must say which parts of the license are secret. This clause is also a good place to strengthen an NDA if it's weak.

What is assignment provision in a license agreement?

Assignment provision: In many licensing agreements, the licensor asks for the right to assign licenses to other parties. This happens in non-exclusive license agreements. The language of this section spells out what rights the licensor and licensee have with the license in question.

What to do if you decide to do business with an attorney as your licensing agent?

If you decide to do business with the attorney as your licensing agent, you need to reduce the terms of your relationship to a contract. You should not simply proceed based on an oral agreement or any implicit trust you might have in the attorney.

What is a non-attorney attorney?

An attorney who performs non-attorney services, such as acting as your agent, is mixing legal and nonlegal services. In some states, such as California, the law requires that an attorney entering into such a relationship advise the client in writing to seek the advice of another (independent) attorney.

How to find out if an attorney has disciplinary history?

Has he or she practiced an area of law that relates to your product or industry? Has the attorney represented other clients in licensing agreements? Check with your state bar association to determine whether the attorney has a record of disciplinary actions.

What does an attorney do with a patent?

Sometimes, an attorney will act as an agent to license your great idea or patented invention. The attorney may have connections within an industry (such as the film, television, or fashion industry) and may be willing to represent you to potential licensees. A patent attorney might, for instance, see value in your invention and agree to represent it and waive attorney's fees in return for a percentage of the royalties. What issues should you consider in this type of relationship?

Can an attorney be intertwined with a business?

Becoming intertwined with an attorney in your business dealings can sometimes prove disastrous. It may be difficult to extricate yourself and may be very expensive. Proceed cautiously.

What rights does the owner-licensor have in a license?

Chief among the owner-licensor’s rights in a license relationship is the right to revoke the license “at will” and to use “self-help” to remove a defaulting licensee from the licensed premises without having to endure months or years of lengthy and frustrating litigation to regain possession of valuable real estate.

What is the difference between a lease and a license?

As explained in Friedman On Leases, the distinction between a lease and a license is that: A lease is a conveyance of exclusive possession of specific property… usually in consideration of the payment of rent, which vests an estate in the grantee, [while] a license, on the other hand, merely makes permissible acts on the land ...

Is there a market for real estate license agreements?

At present, real estate license agreements appear to be utilized primarily by owners of properties licensed to short-term users: office space, laundry rooms, certain types of storage spaces, and kiosks in shopping malls. It is clear that there is a market for such agreements. Whether there is a market for real estate license agreements for other types of occupancy may not be so apparent, but, given the need of landlords to be relieved of the onerous burdens and frustrations of traditional landlord-tenant litigation, such an agreement may be useful for the right business plan.

Do attorneys need to have a license regime?

In addition, attorneys will need to give close attention to the objectives of the client and determine how much initial cost the client is willing to accept in order to provide the kind of “full service” agreement that will pass a court’s “license” test .

Is a license a lease?

To obtain the benefit of a license agreement, the property owner must ensure that its agreement with the prospective user of the premises is indeed a license and not a lease. This is not necessarily an easy task to accomplish. Merely calling the agreement a “license” will not make it so. Whether an agreement is held to be a license ...

Can a license agreement eliminate litigation?

Nevertheless, the use of a license agreement, instead of a lease, will not entirely eliminate all possibility of litigation between the owner-licensor and the tenant-licensee. The question of whether or not the “self-help” used was peaceable (and therefore lawful) or forcible (and therefore unlawful) is always a possible subject of litigation.

Does a tenant licensee have a right to possession?

In contrast, under a bona fide license agreement, the tenant-licensee owns no estate in the premises and has no right to possession. Common law principles apply, and the owner-licensor has the absolute right to use peaceable self-help — at any time — to remove a licensee from the licensed premises for any reason or no reason.

Licensing Basics

A license is essentially a contract that gives the owner of IP a way to control, protect, manage, and profit from their IP. Moreover, an individual with the rights to IP (licensor) can make money by charging a user (licensor) to use their product.

Scope of the License

One of the most important pieces of a licensing agreement is the scope. This is because it determines how a licensee is allowed to use the IP. A licensee can be granted unrestricted use of IP or limited use rights of IP.

Revenue

Another essential aspect of the license agreement is the terms controlling the revenue generated from any licensed product. There are a number of ways to deal with revenue in a licensing agreement and choosing what is right for you will be dependent upon what type of invention you are licensing.

Enforcing your Licensing Agreement

Ensuring that your licensing agreement is enforceable is of paramount importance. There are federal laws in place that provide for civil and criminal penalties for unauthorized use of IP and pirating. Piracy in IP is defined as the unauthorized duplication of protected matter.

Why Legal Guidance is Especially Important

The field of IP is extremely complicated and licensing an idea or invention requires a careful balance of legal knowledge and business finesse. Attorneys are in the best place to assist in writing a licensing agreement that will encompass all of the terms that are important to you and help to ensure it is enforceable.

Licenses and Your Rights

What Should Be Included in A Licensing Agreement?

Licensing Agreement Enforcement

Importance of Obtaining Legal Guidance

• Intellectual property is complex. Licensing of intellectual property involves a tricky mix of legal and business judgment, and also requires a degree of specialization. An attorney with experience in particular types of intellectual property transactions, such as trademark listening or copyright licensing, can provide invaluable help with drafting ...

See more on lawyers.com