Achieve Digital Signature Legitimacy for Assignment of Intellectual Property in United States

How to eSign a document: digital signature legitimacy for Assignment of intellectual property in United States

if your company's like most companies fortunately most of your IP activity is going to be licensing not litigation that's a good thing what is licensing well a license is essentially an agreement between the licensed or the owner of Technology and the licensee the company that wants to use that technology so they enter into an agreement whereby the licensee gets the rights to use the technology and the license or gets something maybe money maybe something else in a technology context licensing really involves business considerations technical considerations and of course legal considerations and you really want to make sure at the very beginning you know what success looks like in all three fronts know what your objectives are when you're licensing one thing to keep in mind it's very important flexibility flexibility flexibility the hallmark of licensing is flexibility there is so much you can do to change the deal that you can almost always find some kind of a solution that works both for the licensee and for the license or you can change the duration of the license the scope of the license the payment process is a lot you can change and you can bring in other factors perhaps a supply deal is in the works you may not simply lightson somebody's technology you may license their technology and sell them something or buy something from them all of this can be worked into an overarching deal that works for both sides an early question in almost every license negotiation is the price the truth is the price is typically finally settled at the end of the licensing negotiation in my experience all the other terms of the deal impact the price so until you have those negotiated you really don't have comfort that you know what the price want to be it's a hard question it's a business question really at the end of the day there are factors that you have to take into account and they're the ones that are intuitive to you really your technology is not worth more than the cost of the next best alternative if they've got another alternative out there that is as good or almost as good they might pay a premium for your technology but not that much if there's no other game in town you might get a big premium for your technology there are some rules of thumb you might have heard that the license or gets a quarter to a third of the profits don't rely on them they're not a bad starting point but they're not reliable it really comes down to who's taking the risk who's making the investment who's in a position to take advantage of the technology if you're licensing technology into your company and you're going to spend money in time and effort creating the marketplace for that technology you're taking a big risk setting aside the cost of the royalty you're taking a big risk with your company's resources so that goes into the equation of course the license or has already invested in developing the technology that they're licensing that goes into the equation too everything goes into the equation try to think of what you need out of the deal have in mind for what the other side needs out of the deal - it's all well and good to demand everything on your side that's really a path to an on deal if you want a deal have in mind your needs also have in mind the other side's needs remember the hallmark of Licensing is flexibility licenses come in a lot of different flavors and this is good this gives you some opportunity to craft a license to your particular deal to your particular needs for example there are licenses that are exclusive there are licenses that are non-exclusive and there are licenses halfway in between let me tell you what I mean an exclusive license means that the license or the one licensing the technology out will not license anybody else to use that technology and won't even use it themselves a non-exclusive license is one in which the license or can license any number of different licenses you may have a non-exclusive license and your competitor may also have a non-exclusive license to the same technology someone in between these two is sometimes referred to as a sole license with a license or will license you the licensee will not license any other licensees but has the right to continue using the technology themselves another aspect of flexibility in the license agreement is the field of use your company has a focus on a certain area of Technology a certain market segment you may not want to pay for or need a license beyond your particular field of use the license or will license you exclusively are not exclusively in that field of use and then separately license other people in different fields of use having nothing to do with your market space that works for the license or it works for you you pay less and the license or gets to exploit the technology in other fields with people who are appropriate to those other fields another aspect of Licensing flexibility is the duration of the license not all licenses are permanent some have a fixed period of time a year a month ten years whatever it might be that's fine if you're a licensee in that situation with a fixed period of time license make sure that it's long enough you do not want to have to go back to the license or typically to renegotiate because of course by that time you've baked the technology into your platform and the license where knows this the price of Poker may go way up get the license long enough to cover your entire need it could be a simple royalty I will pay you $1 for each unit of product that I sell straightforward pretty common but there's a lot of flavors ease you can imagine you might instead for example have an upfront payment of a certain amount and pay no more that's it I'm done I've paid you a million dollars I will never pay you another dime I've got a permanent license fine not very usual but not uncommon and anywhere in between here for example a lot of licenses have a cap on the amount of royalties that are payable in any given year or a cap on the total amount of royalties under the life of the agreement for example I'll pay you $1 a unit but by the time I've paid you $1,000,000 whenever that happens I am done I will pay you no more and my license is now permanent not uncommon have in mind all of this flexibility in negotiating the payment terms because if you're a smaller company you may have cashflow problems at the near end and expect to have no cash flow problems later push the payments out as far as you can it'll work for you if the license or has sufficient financial muscle they'll be happy to accommodate that along with the right to use technology you may want to negotiate some technical assistance remember the license or has technology in this area they've been working in this area they know it you know it better than you do probably so you may want to negotiate for some technical assistance that might mean they make someone available on a phone it might mean that they put people into your facility for a short period of time to help it get you up to speed to help get you up and running on the use of the new technology that you've just licensed in from them if you don't need anything but the rights we sometimes call this a naked license so you get a license under the patent of whatever scope in terms of time and in terms of field of use and that's it no technical assistance no nothing it's one other flavor I want to mention to you it's not really a license it's a right to get rights and we've used this a number of times to help get past a sticky problem sometimes you can look down the road and realize that there may be more technology to be licensed in the future you don't need it now you're not sure you ever will perhaps we're talking about the license always future improvements you may want to have access to those you don't want to wind up licensing technology that's old hat if the technology license or is going to improve upon it in the future you'd like access to that but who knows what that's worth so consider adding into your license agreements in those situations a provision that gives you the right to get rights on reasonable terms and conditions it really kicks the can down the road a little bit but at least it gives you a place at the table at least the license or has to come and negotiate with you on what would be reasonable it push comes to shove you may actually have to ask a judge to help you figure out what's reasonable but at least as I say you have a place at the table to negotiate that license if flexibility is the first hallmark of Licensing nuances the other the terms of an agreement determine the scope of your rights the duration of your rights and so many other things and you need to pay very close attention you need to pay exquisite attention to the detail of the written agreement Commons can make a difference the placement of a comma can make a difference believe it or not it's very important it's a fairly famous case in Canada it's a contract dispute and the plaintiff argued one side and the defendant argued the other and the judge rendered a decision and in writing the reason for the judge's decision the judge said I'm going with one party instead of the other because there was a comma here had there been no comma here I would have gone the other way Wow that's what I'm talking about that's the level of nuance that's the level of detail that you need to pay attention to to get the licensing deal done correctly you need to be sure that the provisions of the agreements say just what you need them to say the provisions of a license agreement are often very complex with definitions and reference back and reference forward you need to work through them carefully you probably need advice of counsel on this make sure that it says exactly what you needed to say go through the final written agreement before you sign with exquisite detail to make sure that it's what you negotiated that it says what you needed to say if it doesn't put your pencil down fix it if you're a technology based company then almost certainly licensing is going to be an important part of your IP activities it's important to do it carefully and well you