IP Agreements / Licensing

Intellectual property owners seeking to collaborate with others and/or resolve disputes should have an Agreement in place that defines the rights and obligations between the parties. Commercializing Intellectual Property and settling disputes can take many different forms, and because unique and complex issues often arise in negotiating those agreements, retaining counsel is an important consideration. The Firm’s attorneys have decades of experience in preparing various types of Intellectual Property Agreements, including but not limited to assignments and licenses, non-disclosure agreements, work-for-hire agreements, consent agreements, co-existence agreements, franchise agreements, software development agreements, joint development agreements, and a variety of other contractual arrangements pertaining to the use, development, and/or commercialization of Intellectual Property. The Firm’s litigators are equally experienced with settlement agreements to resolve alleged liability for infringement and other causes of action.

When ownership of Intellectual Property is transferred to a third party, that conveyance is generally known as an assignment. By comparison, a license does not transfer ownership, but instead grants a licensee the right to use the owner’s Intellectual Property, typically in exchange for a fee. Generally, there are two types of licenses: (1) an exclusive license, which allows only the licensee to use and exploit the licensor’s Intellectual Property; and (2) a non-exclusive license, which allows the licensee and potentially other licensees to use and exploit the same Intellectual Property. Whether expanding a business geographically, obtaining additional revenue, or pursuing infringement claims, licensing agreements can be an effective way for the licensor to generate fees or royalties, among many other benefits, but at the same time retain ownership of the underlying Intellectual Property.

Confidentiality and non-disclosure agreements ( “NDA”) protect confidentiality interests, and also maintain the secrecy of valuable and proprietary information. This contractual agreement between two of more parties often arises in potential sales and acquisition deals, employer-employee relationships, and other business arrangements. An NDA must contain key provisions in order to be enforceable, including the duration of the agreement and delineating what is to be kept “confidential,” and therefore it is critical to retain experienced legal counsel that specialize in these types of contracts.

A work-for-hire agreement is another important tool for Intellectual Property owners. Individuals or businesses often want to commission third parties such as writers, photographers, and artists to create, or even supplement existing Intellectual Property. Although ownership of a work generally belongs to the person who created it, an exception exists where the work was “made for hire.” Many different factors come into play when negotiating this type of agreement, including when the work must be delivered, the format of and requirements for delivery, payment considerations, and defined language regarding ownership of the work at issue.

Similarly, software development agreements are vital for those commissioning another (most often a computer programmer) to develop a software program. This situation commonly arises in the context of mobile application development, where expertise in computer engineering and code writing is needed for development purposes. Inherent in the development of a software program are ownership issues pertaining to both copyrights and patents, among other things. As such, it is best practice for those commissioning the development of a software program to enter into a software development agreement at the outset to solidify ownership rights. As with work-for-hire agreements, software development agreements commonly touch on a variety of terms, including work phases, forms and dates of payment, warranties, and ongoing support and maintenance. However, because software development agreements also serve to define the ownership of Intellectual Property, it is imperative such agreements contain all necessary provisions to ensure that all rights are preserved and vested in the owner.

Another type of collaborative agreement is referred to as a joint development agreement, which serves to set the terms between parties conjunctively developing a product or technology. Joint development agreements commonly arise in the context of research universities, or in instances wherein one party lacks sufficient resources to fully develop a technology and bring it to market. A critical issue arising in such agreements is defining the owner of the Intellectual Property being developed. Indeed, co-inventors of a Patent are afforded equal rights to use, license, and exploit an invention, without the consent of the other co-inventors. It is therefore essential to appropriately define: (a) the technology at issue; (b) to whom ownership of the intellectual property shall vest; and (c) in what instances the non-owner can use such intellectual property.

In conjunction with IP Litigation and Disputes, the Firm is frequently engaged to draft and negotiate co-existence agreements, consent agreements, and other types of settlement agreements for clients. Co-existence agreements generally arise in Trademark law, where two owners agree to use similar marks, subject to certain limitations. These conditions may involve geographic restrictions, limitations imposed upon certain goods and services, and mechanisms to mitigate any potential consumer confusion in the marketplace. While similar to co-existence agreements, consent agreements typically arise during the prosecution phase of a Trademark Application before the United States Patent and Trademark Office (“USPTO”). If an examiner at the USPTO expresses concern about the applicant’s mark being confusingly similar to a prior-registered mark, a consent agreement is often useful evidence to demonstrate that no likelihood of confusion will arise. Settlement agreements resolving potential liability, such as infringement allegations, require a careful analysis of the involved causes of action and a complete release, which can be drafted by one of the Firm’s litigators.

Franchise agreements are also important tools to delineate the terms and obligations governing Intellectual Property in a franchisor–franchisee relationship. This type of agreement outlines the way a franchisee may use the Intellectual Property belonging to the franchisor, such as the franchisor’s Trademarks, logos, and slogans. Inherent in such an agreement are other important considerations, including franchise fees and the franchisee’s allowed territory.

For more information about Intellectual Property Agreements and Licensing, please do not hesitate to email or telephone the Firm. We look forward to being of service.