Licensing agreements enable an intellectual property owner to monetize
the value of a patent, copyright, trademark or other IP rights. A
license agreement authorizes another party to utilize, modify and/or
resell the intellectual property and/or derivative works in exchange for
a royalty or other compensation. Licensing agreements can be in the
form of a patent license, trademark license, copyright license, OEM or reseller agreement,
software licensing agreement, technology licensing agreement or a cross-licensing agreement in which
both parties obtain access to each others’ IP.
Taylor Russell & Russell has expertise in U.S. and International
patent and trademark law, technology licensing agreements, software
licensing, OEM agreements, product licensing and resale agreements. Our
intellectual property attorneys represent licensors and licensees, and
have the technical understanding and practical business management
experience necessary to obtain the most flexible and profitable
licensing terms possible.
Technology and product licensing agreements are beneficial to both the
owner of the intellectual property and to the licensee. The licensee
benefits from the use of the product or proprietary technology (avoiding
the time and expense of in-house development); and the IP rights owner
benefits from the licensing fee or royalty income.
Licensing agreements typically compensate the intellectual property owner and may be in one of the following three ways:
- Running or Recurring Royalty: Licensee pays the licensor on a per-unit,
per-month or per-year basis. This form of licensing agreement limits
the licensee’s initial cost, and allows the licensor to benefit from the
success of the licensee’s product adoption and marketing success.
- Lump Sum Royalty: Licensor receives a one-time payment. The payment can be for a perpetual license or for a limited time term licensing agreement.
- Cross-License Agreement: Each party receives rights to use the
other’s intellectual property for specified applications, time periods,
geographical regions and other conditions. This can create a win-win
technology transfer situation, and avoid the cost and administrative
burden of royalty accounting, reporting and payments.
Negotiable items in licensing agreements frequently include the term of
the technology or product license, restrictions to specific
applications, branding or trademark considerations (i.e., the IP
licensor may require the licensee to acknowledge or promote licensor’s
brand, technology or intellectual property), geographical resale
limitations – and, of course, the amount and structure of royalty
TR&R can assist IP rights owners or prospective licensees with
make/buy/license strategies and planning for technology transfer or
product licensing. For advice or assistance with licensing agreements,
contact Taylor Russell & Russell for an initial consultation about
how to maximize the business value of your intellectual property.