Licensing agreements are invaluable for life sciences and other technology startups because they allow business owners to share their work with others while retaining ownership. At Crowley Law LLC, we understand the critical need for legal, enforceable and comprehensive licenses. Our team of dedicated attorneys is ready to help you create a comprehensive licensing agreement that cultivates collaboration while protecting important company assets.
An intellectual property license is a legal agreement that allows one entity to use another entity’s IP under certain terms or in exchange for some form of payment or other consideration. The intellectual property owner is referred to as the licensor, while the recipient is known as the licensee.
Intellectual property licenses accrue several advantages that contribute to the operations and profitability of life sciences and other technology companies. These include:
Licensing allows intellectual property owners to monetize their inventions or creations by granting others usage and commercialization rights in exchange for compensation.
By obtaining an IP license, a licensee can expand its service or product offerings without needing to create IP from scratch.
Licensees can also access valuable intellectual property without incurring the risks associated with the potential infringement of others’ IP rights.
Licensing facilitates innovation by encouraging life sciences and other technology companies to share knowledge and technology.
Licensing allows the licensor to maintain control over how its brand is used.
A license agreement can take several forms, depending on the type of intellectual property and the objectives of the parties involved. Here are the main types of licenses you should know:
A patent is a legal right that protects an invention from being used, sold or copied without the inventor’s permission. In the United States, patents are granted by the United States Patent and Trademark Office (“USPTO”). They are valid for a limited time, up to 20 years, subject to extension in certain cases. In other countries, government agencies similar to the USPTO perform the same function.
A patent is a creature of national law. So, a patent must be obtained in every country in which protection is sought.
A patent license agreement is a legal contract that allows a patent owner (licensor) to grant another party (licensee) the right to use their patented invention. In most cases, the licensee pays the patent owner an agreed fee in exchange for the rights to the patent. In many cases, this fee is calculated as a percentage of net sales and is referred to as a royalty.
Crowley Law LLC recommends the following considerations when obtaining patents and during patent licensing:
The terms of a license agreement must be clear, especially considering multiple jurisdictions, to ensure patent protection across relevant markets.
Patent licensing strategies should have a global outlook to protect intellectual property rights in all relevant countries.
A trademark can be a design, symbol, phrase, word or a combination of these things that identifies a product or service as belonging to a particular company or source. In the United States, the USPTO is also responsible for registering trademarks for products and services.
A trademark license agreement is a legal contract that allows a trademark owner (licensor) to grant another party (licensee) the right to use the licensor’s trademark under certain conditions. Such licenses specify the terms and conditions of use, such as the geographic territory, the quality of goods or services and the royalty terms.
Trademark licensing accrues several advantages for life sciences and other technology startups, including:
Trademark licensing allows another party to use the brand while maintaining quality control and brand integrity.
A trademark license ensures that a brand’s reputation and quality are preserved, even when used by other parties.
A copyright protects original works of authorship, such as computer programs, illustrations and architectural works, as soon as the author fixes the work in a tangible form of expression. In the United States, the Copyright Office, which is part of the Library of Congress, is responsible for administering copyright law.
A copyright license is a contract between a copyright owner and another party who wishes to use the copyrighted work. It permits specific uses for a certain duration. A copyright license can also be limited to a specific jurisdiction.
While there are many potential benefits of copyright licensing to the licensor and licensee, there are two key advantages you should know:
Software and algorithms are particular types of works subject to copyright protection and, in some cases, may be subject to patent protection or protection as trade secrets. These works are commonly licensed to other parties for commercial use.
Software licensing permits third parties, such as end users, to access software while maintaining the publisher’s ownership rights. The licenses specify usage terms, installation limits and any restrictions on modification or redistribution.
Licensing accrues several benefits for software developers and users, including:
Life sciences and other technology companies can generate revenue by licensing their IP to other parties. In a common form of licensing relationship, the licensee also gains monetary returns from the sales of the related services and products.
Businesses can also benefit from accessing IP developed by universities, research institutions or other innovators through licensing agreements. This process is often facilitated by a technology transfer office within the institution with rights to the IP. In the typical case, the institution receives a license fee, while the licensee gains an opportunity to monetize the innovations.
Whether you wish to license your IP or obtain the rights to another party’s IP, you will inevitably face several challenges and uncertainties. You may struggle to define comprehensive terms, achieve the desired control over IP and determine appropriate fees. Crowley Law LLC is ready to help you navigate these uncertainties and effective IP licensing. Some of our pertinent services include:
We draft IP licenses and agreements tailored to specific needs, ensuring they clearly define the rights and obligations of both parties. We also help our clients negotiate favorable terms, such as royalties, exclusivity and scope of use.
We help our clients ensure that their licensing agreements comply with relevant laws, both domestic and foreign, particularly regarding patents, trademarks, copyrights or trade secrets.
We assist our clients in performing research to verify that the IP being licensed is valid and that the licensor has the legal right to license it.
We help our clients adhere to the terms of their licensing agreements. If an IP license is infringed, we can also help enforce the terms through litigation or alternative dispute resolution methods.
We provide strategic advice on how to best structure licensing arrangements to maximize revenue while protecting the IP, particularly when dealing with multiple territories or industries.
In most cases, a licensing agreement specifies an initial fixed fee plus monthly or annual payments. The regular payments could either be fixed or a percentage of net sales. The license should also indicate how a licensee can terminate the contract if it no longer wishes to pay ongoing royalties and have the benefits of the relevant IP.
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