Licensing and Transaction

Licensing and Transactions

Intellectual property ownership provides the right to exclude others from performing certain acts without the owner's permission. Consequently, transactions that grant rights to commercialize or otherwise exploit intellectual property can generate revenue streams and open new markets for innovation. Much of the value of businesses can be traced to intangible assets such as intellectual property.

An intellectual property license grants permission for one party to engage in certain activities concerning another party's intellectual property without subjecting itself to a claim of infringement. A license can be a powerful and flexible instrument for bringing innovation to the marketplace in connection with any form of intellectual property. For example, technology can be licensed under an issued patent or in the form of a trade secret or know-how. Copyrighted works such as books, paintings, musical compositions or computer programs can be licensed to allow the licensee to copy, perform or distribute the works. Trademark rights, based on the associated goodwill of a mark, can similarly be licensed for use in the sale and marketing of goods and services. These licenses can vary in scope, duration and/or field of use, among other variations.

There are numerous other forms of intellectual property related transactions utilized to foster and protect innovation. For example, corporate transactions such as mergers and acquisitions often involve access to intellectual property rights. It is also commonplace for intellectual property owners to work with third-party vendors, consultants, engineers and/or developers in a variety of situations, such as the testing of products or the development of websites. In such situations it is necessary to have written agreements in place to delineate the parties' rights with respect to intellectual property that is developed or used during the relationship.

From initial agreements governing exploratory negotiations through the completion and management of executed intellectual property related agreements or aspects of other agreements, McHale | Slavin has wide-ranging experience in the preparation and negotiation of licenses and other intellectual property related transactions. Contact us for additional information or to schedule a consultation.