Intellectual Property (IP) licensing includes negotiating and enforcing licensing agreements. A license typically includes permissions and privileges that would be otherwise unlawful. Businesses enter into license agreements and generally waive the right to sue for conduct that would otherwise be actionable. As such, it is essential to safeguard against unfair terms and to balance the bargained for exchange.

Negotiating IP Licensing Terms

Each licensing negotiation typically includes an initial relationship assessment, where each party discusses what could mutually benefit the other including grant provisions, territory of rights, future IP, limitations on sublicensing, royalty schemes, marking provisions, auditing rights, representations and warranties, challenge waivers, grant-back clauses, enforcement rights, choice of law provisions, and assignability of rights provided by the licensing agreement.

What Does IP Licensing Cover?

IP licensing attorneys help clients assess and identify each party’s rights, duties, and obligations, while striving to get clients favorable licensing terms that meet their end goals. Experienced IP licensing attorneys can help architect exit strategies and provide guidance on what terms and obligations should survive after the licensing agreement terminates. IP licensing includes, for example:

• Copyright licenses;
• Trademark and brand licenses;
• Franchise Agreements;
• Patent licenses;
• Technology/know-how licenses;
• Trade Secret licenses;
• Software licenses;
• End-user licenses;
• Beta software licenses;
• Open source licenses;
• Non-exclusive licenses;
• Exclusive licenses;
• Cross-licenses;
• Field-of-use licenses;
• Grant-back licenses;
• Sublicenses;
• Compulsory licenses;
• Shop right licenses and agreements;
• Licensing audits; and
• Licensing enforcement actions.

About the IP Law Firm:

At Klemchuk LLP, an IP law firm, we offer comprehensive legal services including litigation and enforcement of all forms of Intellectual Property (IP), as well as registration and licensing of patents, trademarks, trade dress and copyrights. We also provide a wide range of technology, internet, eCommerce and business services, including business planning, formation and financing, mergers and acquisitions, business litigation, data privacy and domain name dispute resolution.  Contact an IP licensing attorney for more information regarding intellectual property and software licensing.

Klemchuk LLP also hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.