Tuesday, July 26, 2011

Considerations for a licensing agreement

Here is a list of things to think about when licensing your inventions.  This is not legal advice or an opinion.  
  • Pre-contract conditions - what are the facts that lead the parties to contract? Current market sales, forecasts, technology trends, and understandings etc.
  • Scope of license - what is being licensed? geographic exclusivity, product exclusivity, profit margin requirements, distribution requirements etc.
  • What is being licensed - specifications of the licensed property?
  • Timing - how fast should it come to market, how long is the license for, what is the market schedule?
  • Options and contingencies - who owns renewal rights (see stewart v. abend ), option to buy, infringement or invalidation of the idea?
  • Money - initial fees, type of royalty, amount of royalty, schedule of royalties.
  • Advertising - who will pay for advertising and who will coordinate advertising?
  • Approval Process - who is in charge of approving product changes.
  • Oversight - who keeps records of the financials and product performance, and what triggers an action based on the financials or product performance?
  • Quality Control - who does it?
  • Insurance - who carries and what is carried?
  • Confidentiality - what is considered confidential and how should parties keep it confidential?
  • Ending the license - how can it be terminated and what happens when it's all over?
  • Disputes - choice of law, jurisdiction, venue, discovery.
  • Assignability - can either party assign rights or responsibilities?
  • Integration - this is the whole agreement.
  • Amendments - how can the contract be amended?

No comments:

Post a Comment