Intellectual Property Rights Licensing Agreements, Record of Changes
Patents, models and trademarks fall within the category of the so-called intangible assets and they can be transferred, exchanged, conferred in companies, inherited, etc. In many jurisdictions, in order to be valid, a licensing agreement or similar must be in written form, and officially recorded with the Patent Office.
Our attorneys and lawyers offer their high quality consultancy services, starting from drafting agreements for the transfer and license of patents, models and trademarks, as well as stipulating all agreements related to the aforementioned rights (secrecy agreements, non-competition agreements, distribution agreements, recordals, etc). They have also a noticeable expertise in related litigation procedures.
A License Agreement for an IP Asset
A license is the contract through which the owner of a trademark, model or patent authorises a third party to use the aforementioned right within its commercial activity. A license can be exclusive or non-exclusive, free of charge or subject to payment of royalties, limited to one or more countries / geographic or worldwide areas. It is usually granted for given periods of times, with right to tacit renewal. The agreement must be in written form and it is highly advisable to proceed with its recordal with the Patent Office.
A variety of licensing agreements exist, they may be categorised in the following broad groups:
- Technology License Agreement
- Trademark Licensing and Franchising Agreement
- Copyright License Agreement
These agreements can be used singularly or form part of a wider contract in various occasions, like mergers and acquisitions or in a joint venture.
What Rights can be granted by a Licensing Agreement
As a licensor or licensee an eventual Licensing Agreement may provide a variety of options in conducting business in a territory of your state or any other geographically delimited area: as an intellectual property owner and a licensor, a company can expand its business. As a licensee, a company can manufacture, sell, import, export, distribute and market goods or services without infringing third party rights.
A licensing agreement is valid only if the licensed intellectual property right is protected in the other country or countries of interest. If no such protection exists in the geographical area of interest, there are no legal rights to put any restriction on its use.
A trademark license agreement or a franchise agreement
In some situations, a company might want to establish a trademark agreement or a franchise agreement, especially in such cases when:
- a company wishes to market a product or a service with the brand owned by others;
- a company wishes to expand the existing market or explore a new one with a product for which the company owns a trademark or similar.
An established trademark conveys values represented by a brand, such that these values are normally determined in a licensing agreement and which a party, signing the agreement, is supposed to transmit.
In a franchise agreement the holder of a certain type of the expertise usually protected by a brand name (a trademark) – the franchisor – may agree to transfer this expertise to a franchisee under specific conditions, granting also the right for the brand name (usually protected by a trademark) use. The franchisor normally transmits to franchisee all necessary skills and know how, in order to maintain the same quality offer throughout all franchisees.
Copyright License Agreements
A company might want to establish a Copyright License when manufacturing or distributing the fruits of the literary and artistic efforts of different creators, when exploring a market or a segment of a market with a company’s own creations.
Based on the difficulties of copyright owners, the collective organisations which manage these rights have been established almost in every country. The SIAE (Italian Society of Authors and Publishers) is one of these organisations on the Italian territory. SIAE exercises the author's right on behalf of their legitimate owners.
Italian law does not require a filing since Berne Convention provides that the rights are first acquired upon creation of the work and therefore it is possible to prove the ownership by other means such as Copyzero. According to Article 180 bis, subscription is mandatory only for cable retransmission (not such a widespread technology in Italy), while broadcasting, both via radio and television, is not included.
At a certain stage of a company development, a new technology or a specific know how of others might be acquired amid a licensing agreement. In this case the rights owned by others in the form of a patent, utility model or a confidential know-how, might be the subject of an agreement. Similarly, a company that holds patents or other IP assets or a valuable know-how might want to monitor them better by granting a license to another company in the same or a new market. For both of these cases, a technology licensing agreement can be the most suitable solution.
By a technology licensing agreement, the licensor authorises the licensee to use the technology under certain agreed terms and conditions.
A Joint venture (JV) is a business entity created by two or more parties and characterised by a variety of business relationships. The JV normally includes a product, a service or a technology, that the parties use or promote by combining their own assets and operations. Companies typically establish a JV for one of the following reasons: to access a new market, to gain scale efficiencies by combining the assets, to share risk for major investments, to access skills and capabilities.
Often, in such agreements, one party will contribute technology or know-how of which he is the proprietor and the other party may contribute financial and expertise of his own to the project. The joint venture will, thus, often include a license agreement concluded by the parties concerned to regulate the use of the proprietary information and compensation for its use.
The Secrecy Agreement / Confidentiality Agreement
Regarding the improvement of the invention or the feedback of the concrete feasibility, the inventor may not avoid involving third parties (drawers, designers, press operators, laboratories, potential clients) before filing the patent application. The secrecy agreement, also called confidentiality agreement, allows binding the aforementioned third party to secrecy regarding any information disclosed thereto, thus avoiding theft of ideas or a pre-disclosure that could potentially invalidate the subsequent patent (application).