INTELLECTUAL PROPERTY

Licensing

Licenses are contracts that entities use to expand access to and the benefit derived from intellectual property (IP). With real property (land-buildings) and personal property (physical items, e.g., cars, equipment), these contracts are often called leases.

People encounter and are deriving benefits from licenses every day with each website you visit (Terms of Use) and each app you use on your phone, tablet, etc. (End User License Agreement (EULA)). These licenses set forth the terms under which the intellectual property owner is allowing you to use their intellectual property.

IP owners (“licensors”) use licenses to provide access to their intellectual property to generate revenue. Licensing is a multi-billion-dollar industry and a significant driver of our economy.

The entity licensing the use of the licensor’s intellectual property (the “licensee” or “IP user”) is looking to derive value from the use of the intellectual property, which is the case with consumer goods and services. In the case of the business licensee, the value of the licensed intellectual property is as a means to generate additional revenue for its customers by delivering goods and services using the intellectual property.

We work with IP owners and IP users to create licensing structures that enable the licensor and licensee to derive value from the intellectual property, while protecting the value of the intellectual property.

Why should I require someone to sign or acknowledge a license before getting access to my IP?

If you do not, then you may have essentially given that person an unlimited right to use your IP including the right to give your IP to others.

Do I need a license to use someone’s intellectual property?

Usually, IP owners often have rights in their intellectual property, such as patents, registered trademarks, and registered copyrights, that can be enforced against you for using their intellectual property without permission, which is called infringement. For intellectual property that is not publicly available (trade secrets), the IP owner may require you to sign a license that includes a non-disclosure agreement (NDA) before providing you with access to the intellectual property.

What types of IP can I use without a license?

IP that is in the public domain, such as the knowledge within, but not necessarily in the form of, articles and books, expired patents, abandoned patent applications and trademarks, etc.

Are there different types of licenses?

Yes, the terms of the license are agreed upon by the IP owner and user. For example, the license may be an exclusive license in which the IP owner agrees not to license the IP to any other IP user or a non-exclusive license in which the IP user agrees that the IP owner is free to license the IP to others.