Transactions

Patent Licensing

A patent license involves the granting of permission from a patent owner – the licensor – to another party – the licensee – to make, use, sell or offer for sale the patented invention.

In addition to general licensing concepts such as specifying the license grant and the consideration provided in exchange for the grant, a patent license has its own special set of issues. For example, a patent license must address the sharing and development of technology and technical expertise during the term of the license agreement. It is critical for the parties to specify: whether the license grant includes access to related know-how and show-how; procedures for the handling of proprietary information exchanged during the relationship; and ownership and future licensing interests in the event further technology is developed by one or both of the parties during the relationship. A patent license must also address the proper marking of the licensed invention under the patent laws. Marking puts potential infringers – i.e., unlicensed practitioners of the invention – on notice that the licensed invention is protected. Conversely, mismarking, the marking of an invention that is not protected under the patent laws, is a fineable offense. A patent license must identify the party responsible for the proper marking of the licensed invention.

McHale | Slavin has extensive experience in the preparation and negotiation of patent licenses. Contact us for additional information or to schedule a consultation.


 

 

Trademark Licensing

A trademark license involves the granting of permission from a trademark owner – the licensor – to another party – the licensee – to use the trademark in the marketing of goods and services.

In addition to general licensing concepts such as specifying the license grant and the consideration provided in exchange for the grant, a trademark license has its own special set of issues. A large measure of the value of a trademark consists of its “goodwill” i.e., the reputation for quality in connection with the source of the goods and services sold under the mark. A trademark owner can directly receive and control that goodwill where the mark is used in connection with the owner’s goods and services. In the context of a license, however, a licensee is selling the goods and services bearing the owner’s mark. Issues of quality control, avoidance of confusion, and the inuring of goodwill to the owner are of critical importance. A trademark owner must be able to protect the goodwill associated with the mark and the value for the innovation that went into the development of the mark.

McHale & Slavin has extensive experience in the preparation and negotiation of trademark licenses. Contact us for additional information or to schedule a consultation.


 

 

Copyright Licensing

A copyright license involves the granting of permission from a copyright owner (the Licensor) to another party (the Licensee) to copy, distribute, digitally transmit, publicly display or perform a work that is protected by copyright. Copyright licensing is an important element of most publishing agreements.

A copyright license may also grant the Licensee the right to create derivative works. A derivate work is a work based on or derived from one or more existing works but it constitutes a new and distinct work itself. For example, the production of a blockbuster movie based on a best-selling novel may involve a copyright license to prepare a derivative work (the movie) based on the underlying work (the novel).

As with other forms of intellectual property licensing, copyright licensing presents its own set of special considerations. For example, an exclusive copyright license agreement must be in writing and signed by the copyright owner or the owner’s authorized agent. The license agreement should also specify which rights under the copyright – such as the right to distribute existing copies as opposed to the right to make new copies – are being granted. 

McHale & Slavin has extensive experience in the preparation and negotiation of copyright licenses. Contact us for additional information or to schedule a consultation.


 

 

Intellectual Property Transfers

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Non-Disclosure Agreements

A Non-Disclosure Agreement (NDA) protects parties who share their confidential information with others, often in the context of discussing a potential business transaction or relationship. An NDA is a critical mechanism for protecting a party’s trade secrets. A court is unlikely to consider a party’s information a secret if the party does not restrict its dissemination with an NDA. An NDA typically arises in discussing a new invention, product, or business relationship that has not yet been commercialized or implemented. 

Important considerations for NDA’s include whether the subject matter of the exchanged confidential information is specifically identified, whether and how the information must be marked as confidential in order to be protected, and restrictions on the recipient’s ability to share the information with outside parties such as vendors or subcontractors. 

McHale & Slavin has extensive experience in the preparation and negotiation of NDA’s. Contact us for additional information or to schedule a consultation.


 

 

Contractor Agreements

Oftentimes the person who conceives a new invention requires technical assistance to make a working prototype. Similarly, a person may think of a new app but does not know how to write the software code to make it happen. A Contractor Agreement involves the hiring of an outside party, an independent contractor, to provide technical assistance in these situations. 

At the crux of the Contractor Agreement is the requirement that the contractor transfer all intellectual property rights in the new product to the hiring party. Where appropriate, the Agreement may also address issues of non-competition in the marketplace and non-solicitation of the hiring party’s employees or customers. 

McHale & Slavin has extensive experience in the preparation and negotiation of Contractor Agreements. Contact us for additional information or to schedule a consultation