When it comes to protecting your company and intellectual property, you’ll want to work with a team that can advise you along every step of the way. This is particularly true when it comes to licensing and negotiations.
IP Licensing and Negotiations
Licensing refers to the business arrangement in which one company gives another company permission to manufacture its product for a specified payment. By doing so, you are granting limited rights to another company who is then permitted to use your intellectual property (such as a patent or copyrighted works), subject to specific terms and conditions.
Intellectual property licensing (also called IP licensing) can be extremely lucrative for the patent, copyright, or trademark. You’ll want to work with an experienced intellectual property lawyer who can negotiate your licensing agreement in a way that will maximize your profit, while minimizing your risks and imposing the appropriate limitations, such as restrictions on time frame, exclusivity, geographic scope or field of use.
These negotiations can be challenging because of the conflicting interests of those involved. Typically, it’s in the best interest of the holder of the patent, trademark, or copyright to grant non-exclusive rights, while imposing maximum restrictions and charging the highest possible licensing fee. On the flip side, it’s usually in the best interest of the licensee to minimize those restrictions and negotiate exclusive rights, with the lowest possible licensing fee in an attempt to maximize return on investment.
Because of the complexities of these standpoints, it’s always advised that you work with an experienced IP lawyer and negotiator to arrive at a licensing agreement that suits both parties.
Patent, Trademark, and Copyright Licensing
Depending on your IP, you will need to seek a certain type of licensing – either patent, trademark, or copyright licensing.
Patent licensing refers to a grant of rights in a patent or a pending patent. The United States Patent and Trademark Office (USPTO) issues patents for certain items. There are four types of inventions that can be protected under patent law. They are:
- Process (or Method) – for producing a useful, concrete, and tangible result (examples include genetic engineering procedures, an investment strategy, computer software, or a process for conducting e-commerce on the Internet).
- Machine – this is a concrete thing or device with moving parts or circuitry that either produces a function or creates a result (examples include cigarette lighters, a sewage treatment system, a laser, or a photocopier).
- An Article of Manufacture – An item or tangible object (examples include erasers, tires, or a hand tool).
- Composition of matter – The combination of two or more chemical compounds. This composition may be the result of chemically combined substances or a mixture (examples include chemical composition, a drug, a soap, or a genetically altered lifeform), or
- an improvement of an invention that fits within one of the first four categories.
Patents grant an individual or company exclusive rights for an average timeframe of 14 to 20 years. During this time, patent licenses can be issued that will allow others to use your invention on a limited basis. Typically, a patent holder will charge a fee for the patent license.
Trademark usage and licensing typically involves brand protection and commercialization. If a company invests in and acquires consumer recognition for their product or service, this often translates to value to the company. Through marketing, careful policing of trademarks including logos and slogans, and effective productization, value can be created and expanded. Our IP team can help you to define, create, and build value in your trademarks as part of your overall IP portfolio strategy.
A copyright license is used to grant certain, limited rights to another party wishing to use the creative works of others, typically in for profit.
In the case of copyright licensing, the license will apply to the usage and reproduction of creative works, such as a book, a movie, a song, a piece of software or an image.
The intellectual property owner is free to impose a number of different restrictions within a patent, trademark or copyright licensing agreement. You are also able to impose restrictions on exclusivity. So, if you issue a non-exclusive copyright license, then you are free to issue another non-exclusive license to a different company offering the same type of product. There may also be time-related restrictions within the licensing restrictions. You can also impose licensing restrictions on field of use, which restricts how intellectual property can be used.
Reilly Intellectual Property Law Firm
Reilly Intellectual Property Law Firm provides intellectual property strategies to protect the inventions that change and shape our world. We handle patents, trademarks, copyrights, and licensing legal services in Denver. Our experienced attorneys provide strategic guidance, patent counseling and prosecution, new product clearance and licensing, as well as counsel regarding patent, copyright, and trademark enforcement and how to avoid possible infringement issues.
Our attorneys actively and aggressively represent plaintiffs and defendants in a wide variety of proceedings before courts both domestically and internationally. We provide solutions that anticipate our client’s need to protect their intellectual property so that their business thrives. We would love to work with you to develop a dynamic strategy that addresses your patent, trademark, copyright, and licensing concerns.