This normally is in the form of a non-assert agreement that allows the licensee to use a patent(s) without worry of violating the patent(s) licensed under the agreement. Such licenses require a written contract. Normally technology or know-how is not exchanged between the parties associated with this type agreement, however, in some cases access to R&D and future divisionals could be requested.
This is a patent, know-how, or combination of both type agreement. These agreements are normally long and complicated and require much effort and thought by both licensor and licensee. Both parties must have a complete understanding of the scope and obligations that will evolve from such an agreement and be prepared to support the agreement long term.
If patents and know-how exists within a company technology portfolio, they normally represent a substantial investment in time and money. Patents and other IP not fully utilized internally should be licensed to enhance company value. Licensing generates revenue that can recover R&D costs and add profit to the bottom line.
Patents and/or know-how required to utilize or supplement owned IP, or for a new venture, can be self developed, or licensed (if it exists). Taking a license, (competently negotiated), will generally be more cost effective than self-development, which may or may not accomplish the goal.
The decision to enter into a licensing arrangement must be carefully considered far in advance of initial meetings with suppliers or potential clients. We have enumerated a few of the important decision points where LS can provide valuable input to the senior management group in charge of making these critical business decisions.
Common ground for both “licensing out” and “licensing in” involves arriving at a fair and equitable license agreement, one that is executable, and meets the needs of both parties from an economic and total business perspective. An Intellectual Property, (IP), license is a long-term commitment to a relationship that must be well thought out and committed to paper. Seldom can a contract be redone because one party decides that it is unfair after execution. It must be done properly from the first draft and the first negotiation, making sure that the final agreement is properly scoped and contains all clauses necessary for complete understanding of the business deal. LS is the consultant to provide you with the experience to get it “right the first time”.
LS has been there and done that. LS can take your company through the thought and planning process necessary to make informed decisions about providing and servicing a license agreement or about taking a license from a licensor. No first time licensor or licensee should be without the services of an experienced licensing executive. Economics of doing business normally does not allow most companies the luxury to maintain a licensing staff. LS provides the professional licensing manager service no longer afforded by the smallest to the large size companies.
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