1) The document discusses standardizing patent license agreements by separating clauses into essential, non-essential, and field-specific categories. Essential clauses include license scope, term, territory that are required for any patent license. Field-specific clauses like field of use depend on the technology or industry.
2) Standardizing essential clauses can streamline drafting and negotiations while allowing field-specific customization. Companies can adopt standardized forms to reduce transaction costs. Wide consensus could further standardize agreements across industries.
3) Separating clause types provides a framework for consistent licensing practices, especially for companies with high volumes, to manage quality and lower legal fees.
A summary of terms that should be included in licence agreements. Presented at an ASEAN-USPTO Program on Technology Transfer in Bangkok, Thailand, July 2, 2009.
The document summarizes key considerations for plan sponsors when negotiating service provider agreements under ERISA. It discusses the prudent expert standard plan sponsors must follow and prohibited transaction rules. It outlines the process for selecting providers, including issuing requests for proposals and evaluating responses. It details important issues to address in negotiations such as the services to be provided, disclosure obligations, operational details, financial arrangements, indemnification, termination, and other contractual terms. The document aims to help plan sponsors understand their responsibilities and negotiate agreements that protect participants and comply with ERISA.
Patent licensing involves granting exploitation rights over a patent to a licensee rather than exploiting the patent directly. This forms a legal contract that spells out the rights and obligations of both parties. Licenses can be revoked if obligations like sales targets are not met, while assigning a patent transfers ownership permanently. Licensors seek to profit from royalties paid by licensees over the patent term. Performance obligations in licenses help ensure steady progress in developing and marketing the patented invention.
The document provides guidance on preparing for and conducting IP licensing negotiations. It advises developing a thorough understanding of both parties' interests, preparing extensively in advance by researching the technology, business objectives, leverage points, and key issues to negotiate, and using a term sheet to outline negotiating positions and strategy. The goal is to find a balanced agreement that provides wins for both sides through open communication and compromise.
The formats for Leave & License and Tenancy Agreements are given only for getting some basic idea and to calculate the pages approximately. Actual document may vary finally and also as per the T & C selected by the parties. This document is downloaded from igrmaharashtra.gov.in and share to help people to find information on Leave and licenses agreement
For more visit: http://realbuildr.com
Exploitation is perceived as an output for any given technology coming from R&D. The objective is this practice is to suggest the drill to conclude a technology transfer agreement by giving a certain number of basic rules related to ordinary, legal and other aspects, and related to negotiation process. It also regroups necessary initial first steps in order to lead to successful exploitation as follows: the valuation of the technology, then the elaboration of transfer scenarios and finally, management of financial compensation.
www.FITT-for-Innovation.eu
A summary of terms that should be included in licence agreements. Presented at an ASEAN-USPTO Program on Technology Transfer in Bangkok, Thailand, July 2, 2009.
The document summarizes key considerations for plan sponsors when negotiating service provider agreements under ERISA. It discusses the prudent expert standard plan sponsors must follow and prohibited transaction rules. It outlines the process for selecting providers, including issuing requests for proposals and evaluating responses. It details important issues to address in negotiations such as the services to be provided, disclosure obligations, operational details, financial arrangements, indemnification, termination, and other contractual terms. The document aims to help plan sponsors understand their responsibilities and negotiate agreements that protect participants and comply with ERISA.
Patent licensing involves granting exploitation rights over a patent to a licensee rather than exploiting the patent directly. This forms a legal contract that spells out the rights and obligations of both parties. Licenses can be revoked if obligations like sales targets are not met, while assigning a patent transfers ownership permanently. Licensors seek to profit from royalties paid by licensees over the patent term. Performance obligations in licenses help ensure steady progress in developing and marketing the patented invention.
The document provides guidance on preparing for and conducting IP licensing negotiations. It advises developing a thorough understanding of both parties' interests, preparing extensively in advance by researching the technology, business objectives, leverage points, and key issues to negotiate, and using a term sheet to outline negotiating positions and strategy. The goal is to find a balanced agreement that provides wins for both sides through open communication and compromise.
The formats for Leave & License and Tenancy Agreements are given only for getting some basic idea and to calculate the pages approximately. Actual document may vary finally and also as per the T & C selected by the parties. This document is downloaded from igrmaharashtra.gov.in and share to help people to find information on Leave and licenses agreement
For more visit: http://realbuildr.com
Exploitation is perceived as an output for any given technology coming from R&D. The objective is this practice is to suggest the drill to conclude a technology transfer agreement by giving a certain number of basic rules related to ordinary, legal and other aspects, and related to negotiation process. It also regroups necessary initial first steps in order to lead to successful exploitation as follows: the valuation of the technology, then the elaboration of transfer scenarios and finally, management of financial compensation.
www.FITT-for-Innovation.eu
Intellectual property refers to creations of the mind such as inventions, artistic works, and symbols. There are several types of intellectual property including patents, copyrights, trademarks, trade secrets, and designs. Technology licensing involves an agreement where one party receives the right to use another party's intellectual property in exchange for compensation. Key components of technology licensing agreements include defining the licensed intellectual property, payment terms, rights to improvements, provisions for transferring or terminating the agreement, and resolving disputes.
The document discusses the relationship between patents and technical standards. It notes that standards aim to promote compatibility, interoperability, and adoption of new technologies. Both patents and standards encourage innovation and diffusion of technology, but there can be conflicts when a standard requires use of patented technology. To address this, standards organizations have developed patent policies requiring disclosure of relevant patents and commitments to license them on reasonable terms. However, these policies have drawbacks and disputes can still arise. The document explores legislative, contractual, and alternative dispute resolution options to improve the situation.
The document discusses strategies for optimizing legal process outsourcing (LPO) contracts during an economic recession. It recommends retaining existing customers while reducing costs without impacting service delivery. Key strategies include improving efficiency, quality and operations; renegotiating existing contracts to reduce costs; exercising audit and benchmarking rights; and drafting contracts with flexibility, liability caps, and exit strategies to adapt to changing market conditions.
TRUST. IP and Technology Update - IT Audit Toolkit for CIOs and General Couns...Jan Lindberg
Planning the right strategy to survive third-party licence audits is essential to minimizing your expenses that arise out of third-party audits. In this article, we aim to provide experiences from recent IT disputes from the customer’s or target company’s perspective, as well as tools for handling different technology licensing related breach of contract and copyright infringement claims after licence audits.
This lecture include introduction to software contracts. Before starting development companies prepare agreement document to deal with conflicts afterwards.
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IT contracts management creates reliable processes and it comes in many forms. Learn more about IT contracts key terms & conditions, And also know why IT & legal should collaborate to manage IT contracts better
The document discusses six key provisions that should be included in an outsourcing agreement to prevent potential pitfalls: 1) Protect intellectual property, 2) Ensure data privacy, 3) Require consent for subcontracting, 4) Include an exit strategy, 5) Establish dispute resolution procedures, and 6) Agree on processes to ensure security standards. Having a well-drafted outsourcing agreement with these provisions can help minimize risks when outsourcing business functions overseas.
Discussion about the pharmaceutical licencing process and different steps involved in the process, current trends in licencing process and types of licences.
Construction contracts can contain terms that impact your company’s bottom line. Reviewing them carefully prior to signing is indispensable, and can save your company time and money. This contract review guide is meant to be a starting point for reviewing contracts in general…
Third Party software product licenses and services resold by VMware are provided by the manufacturer under its own end user license agreement and services terms.
Download at: https://templateshunter.com/business-operations/end-user-license-agreement-style-17.html
TechIPm LLC provides various patent monetization and management services including strategic patent portfolio development, standard essential patent evaluation and development, strategic patent acquisition, and strategic patent licensing program development. The company helps clients identify valuable patents, develop patent claims, evaluate standard essential patent candidates, acquire strategic patents, and establish profitable patent licensing programs. TechIPm also provides commercialization consulting services to help clients develop new business models and ecosystems based on their intellectual property.
Abu Dhabi Building Codes & Standards-Final.pdfssuser8cff9d
The aim of this course is to introduce the required skill for understanding the importance, application, use, and management of various buildings and constructions codes, regulations, specifications and standards around the world; especially in UAE (Abu Dhabi).
Utility models provide exclusive rights similar to patents but with shorter terms of protection (usually 7-10 years) and lower filing costs. Unlike patents, utility models do not require examination for novelty or inventiveness prior to registration. While patents protect inventions, utility models can protect products or processes depending on the jurisdiction. Technology transfer agreements facilitate the application of technologies developed for one purpose to new uses or users, and generally involve the transfer of various types of technical knowledge through licensing. India's policies aim to promote both indigenous technology development and regulated technology imports through transfer agreements within approved payment limits and royalty periods.
Licensing involves granting permission to use legally protected properties like trademarks or copyrights. Licensing agreements specify the terms under which the licensee can use the property in exchange for fees. Key aspects of licensing agreements include the type of license granted, territory covered, duration and renewal terms, fees and payments, termination clauses, and effects of termination. Well-structured agreements benefit both licensors by expanding their brands and generating revenue, and licensees by leveraging well-known properties to increase sales.
Vendor Management and Contract NegotiationsButlerRubin
Dan Cotter presented on vendor management and contract negotiations. He discussed creating a baseline inventory of all vendor contracts. It is important to inventory and store contracts in a centralized system for oversight. A contract management policy should establish authority levels, review procedures, vendor due diligence processes, and standard contract provisions. The policy ensures proper oversight of vendors and management of legal and financial risk. Cybersecurity and privacy are also important considerations in the contract process given the risks of third and nth-party vendors.
Neo Jurix LPO Solutions Pvt. Ltd. provides contract management and legal outsourcing services. They offer solutions such as contract review, abstraction, creation of a contract database, risk analysis, and obligation management. Their services help companies maintain uniformity in contracts, improve visibility and organization of contracts, and properly manage legal obligations. Neo Jurix has experienced attorneys and uses processes like redlining, comparison of contract versions, and drafting of contract summaries to provide efficient contract management solutions.
The document discusses Standard Essential Patents (SEPs) for mobile communication standards, which have become central to legal and policy debates. Recent court rulings on FRAND (Fair, Reasonable And Non Discriminatory) disputes are analyzed. The author contends that while the courts' resolutions aim to address FRAND issues, they could have unintended adverse effects on the information and communications technology industry. Alternative approaches are proposed to better resolve disputes around SEPs and FRAND licensing.
As represented by “Smartphone Patent Wars,” patents for smartphones became the most
important strategic competition tool among market leaders. Especially, patents for mobile
communication standards, which are the so-called ‘Standard Essential Patents (SEPs),’ became
the center of legal and policy debates regarding their intellectual property rights (IPRs).
The author provides the implications of recent courts’ resolutions regarding FRAND
(Fair, Reasonable And Non Discriminatory) disputes to the ICT (Information and
Communications Technology) industry and provide several alternative options for resolving
FRAND disputes. The author contends that the current concerted resolutions in courts and
regulation agencies can results in adverse effects to the ICT industry. The author also contends
the main drawback of the recent proposals to resolve the disputes surrounding SEPs through the
ex ante FRAND licensing and the ICT industry players’ voluntary collaboration. From the
analysis of ICT industry players’ response to the outcomes of court resolutions, the author
contends a compromising way to provide FRAND Royalty adopting arguments from both sides
of the disputes. The author also contends a practical improvement to the voluntary collaboration
proposals to resolve the disputes surrounding SEPs.
Spotlight on Licensing - Avoiding and Limiting Risk in AgreementsMichael Annis
This document provides an overview of key considerations for negotiating licensing agreements to avoid and limit risks. It discusses preparing for negotiations by understanding the value of the licensed asset. Key licensing terms that should be addressed include scope, improvements, enforcement rights, representations, valuations, exclusivity, and bankruptcy. When negotiating, common pitfalls to avoid are having a winner-take-all attitude, focusing on price over other terms, and not understanding the other party's critical issues. Thorough preparation and balancing both parties' interests leads to stronger agreements.
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Intellectual property refers to creations of the mind such as inventions, artistic works, and symbols. There are several types of intellectual property including patents, copyrights, trademarks, trade secrets, and designs. Technology licensing involves an agreement where one party receives the right to use another party's intellectual property in exchange for compensation. Key components of technology licensing agreements include defining the licensed intellectual property, payment terms, rights to improvements, provisions for transferring or terminating the agreement, and resolving disputes.
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Abu Dhabi Building Codes & Standards-Final.pdfssuser8cff9d
The aim of this course is to introduce the required skill for understanding the importance, application, use, and management of various buildings and constructions codes, regulations, specifications and standards around the world; especially in UAE (Abu Dhabi).
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The document discusses Standard Essential Patents (SEPs) for mobile communication standards, which have become central to legal and policy debates. Recent court rulings on FRAND (Fair, Reasonable And Non Discriminatory) disputes are analyzed. The author contends that while the courts' resolutions aim to address FRAND issues, they could have unintended adverse effects on the information and communications technology industry. Alternative approaches are proposed to better resolve disputes around SEPs and FRAND licensing.
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The author provides the implications of recent courts’ resolutions regarding FRAND
(Fair, Reasonable And Non Discriminatory) disputes to the ICT (Information and
Communications Technology) industry and provide several alternative options for resolving
FRAND disputes. The author contends that the current concerted resolutions in courts and
regulation agencies can results in adverse effects to the ICT industry. The author also contends
the main drawback of the recent proposals to resolve the disputes surrounding SEPs through the
ex ante FRAND licensing and the ICT industry players’ voluntary collaboration. From the
analysis of ICT industry players’ response to the outcomes of court resolutions, the author
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proposals to resolve the disputes surrounding SEPs.
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Similar to Standardizing Patent License Agreements (20)
Spotlight on Licensing - Avoiding and Limiting Risk in Agreements
Standardizing Patent License Agreements
1. Standardizing Patent License Agreements: A Method of
Evaluating What May Be Standardized
By Lynda Covello, LL.M., CEO of LPC Consulting International and Chair, LESI Standard Licensing Agreements
Committee & David Newman, Shareholder, Greenberg Traurig LLP and Member of the Patents Working Group,
LESI Standard Licensing Agreements Committee
Complementing the International Roundtable Session at the 2010 LES USA/Canada Annual Meeting in Chicago
In effecting the standardization of patent license agreements, the purpose and necessary conditions underlying
standardization should first be determined. The contract provisions can then be classified and separated as essential
or non-essential to facilitate the standardization process. Once separated, the writer can focus on those elements of
essential clauses that can be standardized and those that may vary from agreement to agreement. A disciplined
process enables the analysis of such elements and reduces the level of confusion and variability. The use of defined
terms, the content of which may vary, enables the architecture of agreements to be finite and predictable, while the
specific elements remain adaptable to each transaction.
I. Purpose of Standardization for Patent Licenses
There are many reasons to encourage the standardization of patent license agreements: reducing transaction cost
and time; enabling increased transaction volume; enhancing the primary market for patent transactions; enabling the
liquidity of patent assets; facilitating the corporate use of patent assets and generating increased revenues from such
assets. Standardization for any of these reasons can increase the return on investment in the development of IP
assets.
II. Criteria for Standardization
While standardization may occur at different levels, there are three key levels where this typically happens. At the
entity-level, a corporation or other entity standardizes its own agreement forms. Within an industry, a consensus may
form around standard forms, such as in software licenses and copyright collectives. Finally standardization may occur
at the jurisdictional level, where agreement terms are standardized by legislative fiat, i.e., the UCC, consumer
protection legislation, etc.
At the first two levels, standardization may be formal or informal. At all three levels, the conditions that enable
agreements to be standardized are the same. First, there must be sufficient experience with the particular type of
transaction concerned. Second, there has to be sufficient volume to provide economies of scale in exerting the effort
required to achieve standardization. Finally, there needs to be a consensus on common elements, issues and
provisions required for the transaction-type as well as on the risks presented by such transactions and a reasonable
allocation or management of such risks.
III. Separating Essential Clauses from Non-Essential Clauses
A first step towards standardization must be the identification of those provisions which are essential to every patent
license, and their separation from non-essential provisions. This must be done from a functional perspective. Which
provisions are necessary in order for a patent license to exist in a valid and functional manner? Non-essential
provisions may be very important to the administration of the contract, the management of the relationship between
the parties and the determination of disputes which may arise during or after the term.
A. Essential Clauses
2. In order for a patent license to be valid and functional, it must contain the basic elements of a contract for the relevant
jurisdiction (typically offer, acceptance, meeting of the minds, consideration, etc.), as well as provisions dealing with
the following issues:
1. Licensed Subject Matter: A clear definition of exactly what is licensed, whether a product, technology or process,
and whether it relates to a single patent, a patent family, a portfolio of patents, foreign counterparts, applications,
continuations, related or derivative patents, improvements or subsequent patents. Relevant know-how may also be
included here.
2. License Grant: detailing the scope and nature of the license (i.e, exclusive or not, field-exclusive, perpetual,
irrevocable, royalty-bearing, permitted use, make, use, sell, sublicense, etc.)
3. Field of Use or Permitted Use (where appropriate).
3. Territory
4. License Rate (i.e., license fees, royalties, up-front payments, milestones, including the basis for such payments,
such as Net Sales, Net Revenues, completion criteria for milestones, etc.)
5. Term
6. Termination
7. Notice
9. Licensed Patent Maintenance, Enforcement & Defense
B. Some Non-Essential (but Important) Clauses
1. Relationship Management
2. Change Management
3. Effects of Termination
4. Dispute Resolution (including ADR)
5. Governing Law: patents themselves are governed by the law of the jurisdiction that issued them, but contracts
have different criteria for determination of which law governs in the case of multi-jurisdictional elements, which is
often the case with patent and other IP-related transactions. A court may determine which law should govern the
contract, but it can make things much simpler if the parties specify.
6. Improvements
7. Representations and Warranties
8. Limitations of Liability
9. Indemnities
10. Patent Marking
IV. Separating Standardizable Clauses from Non-Standardizable Clauses
Some of the Essential Clauses described above can be standardized in order to be used in a standardized license.
We believe standardized licenses having such Essential Clauses, can be used across a wide variety of technologies
and fields of use. For example, a non-exclusive license may be standardized using such Essential clauses by merely
modifying the definition section, party names and the Field Specific Clauses, as discussed below. Many of the Non-
Essential Clauses may also be standardized.
A. Standardizable Clauses
An example of a standardizable clause which may be used for a wide range of non-exclusive licenses is a uniform
License Grant clause as follows:
License Grant. Subject to the terms and conditions of this Patent License, after the Effective Date, Licensor hereby
grants Licensee a non-exclusive, non-transferable, non-sublicensable, world-wide right and license under the
Licensed Patent(s) to make, have made, use, have used, sell, have sold, offer to sell, have offered for sale, export,
have exported, import, and have imported any Royalty Bearing Products within the Field of Use.
By use of terms such as Licensed Patent(s) and Royalty Bearing Products, the License Grant clause can be
standardized and only the Definition section needs to be customized. In this example, the specific Licensed Patent(s),
the Royalty Bearing Products and the Field of Use would be the defined terms. By use of such standardized clauses,
the drafting, negotiating, monitoring and enforcing functions can be greatly minimized and resources saved.
3. B. Field Specific Clauses
Some license clauses are essential to the license, but are not readily standardized across a wide range of
technologies or fields of use and must be more variable - based on technology type or field of use.. Examples of Field
Specific Clauses include the Field of Use Clause, the Licensed Product Clause and the License Rate Clause. In
order to make the license drafting process more uniform and dependable it is useful to separate the clauses that may
be standardized from those that require customization based on technology or field of use.
C. Uniformity Among Field Specific Clauses by Technology Category
Once a technology is identified, the Field Specific Clauses may be prepared so that they can be uniformly applied
across the same technology areas. So in most situations a license attorney need only be engaged to modify the
Field Specific Clauses for each technology area and negotiations regarding the standardized license may be limited
to the Field Specific Clauses and some of the Definitions.
V. Conclusion
Although there will always be a need for specific attention to deal terms especially in complex transactions, there are
many situations in which the underlying criteria for standardization of patent licenses – volume, experience and
consensus on key issues -- exist. By using this framework, standardization of patent licenses can be facilitated in
many instances beginning with patent pools, standards groups, university settings and license auctions, but
extending far beyond that as well.
By categorizing different parts of a license agreement as Essential Clauses, non-Essential Clauses and Field Specific
clauses, a more consistent methodology can be employed for drafting and negotiating license agreements. Such a
process can be useful in large licensing departments or smaller R & D companies for managing quality control and
reducing legal costs. For example, if the licensing department policy is that the Essential clauses will not be
negotiated (except for the Field Specific Clauses), a great deal of resources and legal fees may be saved. Where a
standard group or trade group agrees on standardization of the Essential Clauses, the license negotiation and
drafting process can be greatly streamlined, enabling the use of more patented technology by more entities, thus
stimulating economic growth. There is no need to wait for this large-scale acceptance, however, as companies and
other patent owners can begin by creating reasonable and balanced standard patent license agreements for their
use. LES meetings and in particular the LESI Standard Licensing Agreements Committee, provide valuable
opportunities for patent owners and their advisors to discuss and agree to fair and reasonable standard agreement
terms.