Intellectual property rights give the owner of a patent, trademark or copyright the exclusive right to use or sell the intellectual property.
In licensing, an owner of intellectual property rights (the licensor) contracts with a potential user of the idea (the licensee) for the licensee to use the property under the terms of a license agreement. The license may be exclusive or non-exclusive. The licensor can profit from the licensee's resources and the licensee can profit from the licensor's idea. The license is a contract that defines the rights and obligations of each party involved. The licensee does not obtain ownership of the intellectual property, but obtains a limited right to use it as specified in the license agreement.
A license agreement is complicated due to monetary, legal and technical planning, as well as the negotiation required to satisfy the needs of both the licensee and licensor.
Ezra Sutton & Associates have the expertise and have had extraordinary success in pleasing all parties involved in a license agreement. Particularly, Ezra Sutton has been negotiating and preparing Licensing and Distribution agreements for over 30 years. Our associate attorneys provide an additional 16 years of experience in specifically licensing Patents and trademarks.
A licensing strategy will be developed since different inventions require different licensing strategies. For example, a basic new scientific tool is typically licensed on a non-exclusive basis. In contrast, an invention that requires significant investment of resources by a company is typically licensed on an exclusive basis. The exclusive license provides an incentive to the licensee to commit risk capital investments required for product development. The process of developing a license strategy involves seeking information and feedback on market risk from various sources such as potential licensees or investors. Sometimes we may sign a confidentiality agreement with a potential licensee in order to provide them with unpublished information on the invention. Disclosing certain information about an invention before appropriate steps have been taken to protect it (e.g. filing of a patent application) may limit our ability to obtain international patent protection for that invention.