When Do You Need A Licensing Agreement?
A licensing agreement allows one party to use the intellectual property of another party. Such agreements can be mutually beneficial in any number of circumstances. While one group may hold the rights to a product or trademark, it may not have the capacity or interest in its production that another group is willing to pay for. If you find yourself on either side of this equation, you will need an experienced IP attorney to make sure your agreement properly considers all important negotiating points.
Patent attorney Parrish Nordan, the founder of Nordan Licensing, is an experienced IP attorney with offices in Dallas and Birmingham. He has assisted companies in executing game-changing licensing agreements. In addition, he has experience with Fortune 100 and Fortune 50 companies, as well as startups and tech companies.
Key Issues In Licensing Agreements
If you are contemplating a licensing agreement, you need to be aware of the key issues your agreement should cover. You may be able to easily resolve some matters, but others could require careful negotiating and specific wording. Key points may include:
- Scope – Your document should clearly define the scope of the intellectual property rights under consideration. It should also describe which rights the license owner (licensor) is selling to the purchasing party (licensee).
- Costs – Not only must your document articulate the price the licensee is paying for the property, but also who will pay for the costs to maintain the intellectual property. For example, if another party challenges the intellectual property in court, who will pay for the litigation to defend it?
- Exclusivity – Is the licensor selling use of the license exclusively to the licensee, or will multiple companies be using the license?
- Care and control – This provision is important in trademark agreements, as a poorly managed trademark can be invalidated.
These are just a few of the important provisions your agreement must address. Your attorney should have not only the legal knowledge and skill to draft a document but also a robust understanding of the technical points related to the intellectual property under discussion. Parrish Nordan has the skill and experience to protect your legal interests at every point in the negotiation and preparation of your agreement.