Intellectual Property Licensing Solicitors

Intellectual Property Licensing Solicitors

• Transform the value in ideas, technology services, software and digital content into profit
• Match commercial objectives with legal outcomes
• Manage your intellectual property in a legally compliant way

We set up our clients to commercialise IP assets and get the intellectual property licence their business needs.

IP  Licensing Services

In this day and age, many businesses can’t operate without licensing IP rights in one form or another.

We’ve worked collaboratively with our clients in ways such as these:

• restructured, rewritten and recast existing IP licences into legal documents businesses can follow
• guided clients on prevailing royal rates
• minimised difficult redline issues and change requests
• highlighted difficult to spot areas of exposure in licences for correction
• reduced business risk by filling gaps in licences which were missed the first go
• given advance notice of legal realities in critiques of existing intellectual property licences
• negotiated clients out of undesirable licence terms and tight spots

Not all intellectual property rights can be protected equally. In those cases, it’s the licensing contract fills gaps and weakness in intellectual property protection.

As ore companies licence more datasets, software and more electronic assets, licensing agreements can become complicated.

It's essential to be able to clearly identify what constitutes licensed use.

What is Intellectual Property Licensing?

Intellectual property rights are everywhere: the software that drives and support business functions, digital content, designs of products, research and development, marketing material and advertisements.

The things businesses sell.

It’s the intellectual property rights which protect saleable products and services which stop competitors from copying it.

Then intellectual property licences give the permission to others to use the intellectual property owned.

It’s not an assignment or transfer of ownership of any property rights: the licensor retains ownership of the intellectual property. They're usually a temporary permission - months or years - to use the assets which are subject to the licence.

Intellectual property rights and confidential information can be licensed: to retain control over it, and make it available to other businesses or the public at large.

Benefits of Licensing IP

Licensing of the individual intellectual property rights – patent rights, copyright, designs, trade marks and confidential information makes that happen. Sometimes it’s in combination each of those rights, on others they’re licensed individually.

It’s IP licensing that enables joint venture agreements, business cooperation, software licensing, franchising and other business opportunities to:

• add value to investment or sale of a business
• enhance revenue streams, whether regular or one-off royalty payments
• expand product and service offerings
• generate greater value within the business and incentives for investment
• enhance value of a business for sale
• chase down a competitor in the market
• maintain a market lead in services for a specific sector

All can lead a business towards achieving its business objectives.

Outward Licensing

For many of the companies we advise, the value in the business exists in the intellectual property rights they’ve created from scratch. It can enable products and services to be integrated with third party intellectual property rights.

From a licensor's perspective the licence should be as specific as it can be in terms of what the licensee is entitled to use the property for. if the not, the licence model can breakdown, because the law may not recognise the relevant IP right(s).

Which IP Right?

Each of the forms of IP rights only protect specific forms of asset: each are unique for each right.

it follows that different  rules apply each of the different IP rights, whether it's a copyright work, a patent, design rights, a database, trade mark or a trade secret. 

Inward Licensing

You’ll know that it’s more cost and time effective to licence technology rather than create the same or similar technology from the ground up, provided the rights terms can be reached.

Then if the direction of the business changes, capital investment and sunk costs to the business may not be as it would have been had it been developed inhouse.

When negotiating the licence, the licensee will at a minimum need to get the permissions required to achieve the business objective in mind. Without them, the licensee can find themselves facing a breach of contract claim and claim for infringement of IP rights.

Essentials of Licensing Intellectual Property

Licensing agreements come in all shapes and sizes.  

What is appropriate for any particular business or transaction will depend on the technology, the purpose it serves, digital content design, or services it supports.

For businesses that want to move quickly into markets and usually prefer to avoid overly complicated, lengthy licensing agreements. They get in the way of getting business done.

Sometimes custom-made licences are needed to support the business to suit the particular transaction: what the licensor and licensee have agreed between themselves.

Contents of Licences

Once the relevant rights are identified, the intellectual property licence should clearly set out:

• Revenue Model: the usual models for licence fees and royalties include a fixed one-off fee and periodical calculated recurring fees, or fixed to net sales or units sold. Are there to be associated charges with the continuation of the licence
• Scope of Licence: the permissions granted to use the intellectual property, or the purposes for which it may be used within the licence. 
  Is the licence to limited to copying the relevant property, use it for internal business purposes only, can be it sublicensed for revenue purposes on a website, or will it extend to distribution within a larger product or service, such as by a value-added reseller?
• Geographical or Territorial Restrictions:
  • Licences are able to limited to licences within a geographical area, such as Within the M25, England, the UK, worldwide, where appropriate
  • Territorial restrictions: within some other limitation of use, such as worldwide in a specified online environment or marketplace. It may be that a licence should be be limited to specific sectors, markets, products or services
• Type of Licence: The scope of use leads to the type of licence required, which may be:
  • exclusive, where the licensee has the exclusive right to use the intellectual property. The owner of the intellectual property is prevented from using the asset itself. [The licensor is not entitled to use the assets falling within the scope of the licence itself: it limits its own opportunities to exploit the asset]
  • non-exclusive: any number of licences can be granted to licensees by licensors
  • sole: a single person is granted a licence. The owner/licensor has a concurrent right to use the intellectual property itself
  • cross-licence: each party is a licensor of their own intellectual property to the other, as well as a licensee of the other party’s intellectual property.
    Each has permission to use the intellectual property in each other’s defined intellectual property assets.
• Duration: which could be long or short term, and may be made renew after a period of time as part of a subscription.
  Also specified events may bring it to an end earlier than planned, such as a takeover of a licensee by a competitor of the licensor. Does the permission to use it outlive the agreement which grants the licence?
• Sublicences: permission to licenses to onward licence intellectual property rights are not usually automatically granted by a licensor. If the licensee needs the ability to licence others in turn, the parameters should be recorded in the agreement
• Sales quotas and/or sales targets: performance requirements for the licence to remain in place. Quotas and target may also be used to enable lapse of an exclusive licence to a non-exclusive licence

Business Objectives

Licences are rarely one-dimensional transactions.

Clearly, they’re invariably tied to objectives. They frequently form part of:

• data sharing arrangements
• collaboration agreements
• revenue sharing agreements
• reseller agreements
• research and development agreements
• use of technical know-how in combination with other technologies
• joint ventures to release new products, brought about by combining intellectual property to a new company
• content licensing 
• database licensing
• use of image rights for marketing purposes
• franchise agreements

Ultimately, it’s giving permission to others to use assets, information licensing and associated services to add value.

IP Licensing Agreements

Making new business deals should be a smooth process.

IP licensing agreements which meet the mark will depend on what the technology that is being licensed and address the risk factors involved if something does not go as expected, or as the licensor would not prefer.

We’ve worked in partnership with our clients to:

• integrate licensing arrangements into reseller and distribution arrangements
• correct licences obtained from template contract companies which fall short in licensing requirements, to make them suitable for the business using them
• enhance licensing agreements to close loopholes and workarounds brought about by new and developing technologies and IT systems
• prepare licensing arrangements to flow down through distribution chains
• inform licensors and licensees of harsh realities in critiques in intellectual property licence reviews
• prepared focussed warranties and indemnities to guard against shortcomings in property rights
• gear up licences to cater for shortfalls in knowledge transfer agreements
• bolstered licence agreements with appropriate confidentiality arrangements and restrictive covenants

Intellectual Property Licensing Solicitors

We’re intellectual property licensing solicitors and specialists in the field.

Make licences as simple as they can be.

We provide IP strategy advice so you can steer your business from a legal perspective to coincide with your business goals.

In doing so, we assist business get into the position they need to be in and draft, negotiate and advise on intellectual property licences and the business law issues which surround them.

We have done so for market players:

1. starting out with business ventures
2. established companies branching out into new ventures
3. in cut-throat industries to release new technology and disrupt incumbent market participants
4. licence their intellectual property across global markets.

Our Experience

We’ve advised companies in sectors such as yours, including:

• Microsoft Silver and Gold Partners
• specialists in the energy sector
• data scientists engaged to provide deep-insights into supply chains, customer behaviour and accelerating sales
• manufacturers of patrol boats and component parts for use in military environments
• managed service companies partnered with enterprise suppliers, such as IBM, Adobe, Hewlett Packard, Microsoft
• boutique information technology consultancies
• online marketplaces on uses of users’ intellectual property
• worldwide software development companies
• developers and consultants having to manage their own codebases between multiple customers
• developers of highly specialised packages, such as:
  • financial calculations software package
  • signal strength from telecommunication towers
• full stack software developers using their own libraries for in IT consultancies

If you’re a small business, you can avoid overcomplicating your licences.

Licensing Disputes

We’ve advised on breaches of intellectual property licences and use inconsistent with terms of licences – sometimes called intellectual property piracy - and worked with our client to fix it.

Then for licensors, we've worked through situations to correct over-licensing: where they've licensed intellectual property in ways which would cause them serious problems if their customer-base was to come to know of the events which had come to pass.

Move Forwards

Need to ensure we are doing things properly to ensure IP protection will be in your best interests?

Need clarity for your clients to convert prospects to customers faster?

Ready to move your licensing to the next level ?

If you’d like to set up a session to discuss how we set your business up to license and protect your intellectual property, contact us.