International Business Law Advisor Insights on International Litigation & Transactions

10 Must Have Provisions for Your International Licensing Agreement. Wait, Make that 11.

Posted in Intellectual Property

Florida attorney & lawyer, Miami attorney & lawyerOne of the primary uses of international intellectual property rights is a license of those rights as part of one of the many types of technology driven business relationships that a company may enter into as it deals with foreign partners.

What is a Licensing Agreement?

So what exactly is a licensing agreement anyway? In basic terms, a licensing agreement is a contractual right that gives someone permission to do a certain activity or to use certain property owned by someone else. Increasingly, these agreements are being reached between companies located in different parts of the world.

An international license agreement doesn’t have to be long or complicated. It can be straightforward and enforceable. However, many issues come up when drafting a license agreement. Laws relating to intellectual property can be extremely complicated. An attorney can provide invaluable help with drafting your agreement and enforcing it.

Advanategs are technology aquisition, market penetration, protection of intellectual property rights and cost reduction.

A license facilitates the transfer of valuable legal rights and technology bewteen parties to further the overall purpose of the relationship.  A licensing agreement is created when the licensor who owns or otherwise controls the rights, grants to the licensee the right or license to use the legal right specified in the partoies’ contrcat.

It’s important to keep in mind that a license is not an outright assignment of the legal rights from the licensor to the license because the licensor will retain the actual ownership of the licensed subject matter. When the term of the license expires, the licensed right will rvert back to the licensor.  The license, really amounts to a form of renatl or lease of the subject matter.

A company may look at a licnesing arrangement as a means for acquiring new or existing technology needed to lawfully continue its own development or product sales efforts.

Many companies maintain significant parts of their technological portfolio through licening arrangments with other companies, universities, and also foreign companies without the costs and risk associated with new development efforts.

In drafting an international intellectual property agreement be sure to include the following 10 key provisions:

  1. Grant of Rights–  definition and description of licensed technologyscope and use of intellectual property assets
  2. Grant-Back to Licensor
  3. Warranties by Licensor
  4. Royalties
  5. Confidentiality
  6. Quality
  7. Noncompetition
  8. Sub-License
  9. Term & Termination
  10. Compliance with Law
Often left out these agreements is an effective dispute resolution mechanism. As such, be sure to include:
11. Arbitration

For more on how to draft an arbitration, be sure to check out my post, 7 Ways to Bulletproof Your International Arbitration Agreement.