Modified license strategy
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Message: I tried
Who owns the IP that underlies the technology?
Does the licensor own what he or she is licensing to you? Does he or she have the right to license it? Does he or she have the right to license all other
technologies that are needed to make the licensed technology work?
It is important for the license agreement to contain a representation that the licensed IP belongs to the licensor. This avoids a situation where a third party later claims that it owns the IP or technology and the licensor attempts to disclaim responsibility.
In situations where the licensor and licensee will be working together on a technology project or product creation (e.g. a joint venture to develop a product together), it is good practice to specify in the agreement who owns what IP and/or technologies as of the time of the execution of the agreement. If the licensee is contributing some technology or will be using some technology, it is also important to specify who owns that technology, so that there will be no later disputes.
Does the licensor own what he or she is licensing to you? Does he or she have the right to license it? Does he or she have the right to license all other
technologies that are needed to make the licensed technology work?
It is important for the license agreement to contain a representation that the licensed IP belongs to the licensor. This avoids a situation where a third party later claims that it owns the IP or technology and the licensor attempts to disclaim responsibility.
In situations where the licensor and licensee will be working together on a technology project or product creation (e.g. a joint venture to develop a product together), it is good practice to specify in the agreement who owns what IP and/or technologies as of the time of the execution of the agreement. If the licensee is contributing some technology or will be using some technology, it is also important to specify who owns that technology, so that there will be no later disputes.
Consider carefully whether your business requires the right to modify it and make new related products and/or technologies from it. For example, will your technicians and scientists tell you that they must modify a formula or software or a design it in order to use it with your systems and technology?
This is often called “porting” technology to another “platform”. Even if they say only “minor modifications” need to be made, this can be important and must be dealt with in the license.
With respect to any modifications, who will own these modifications?
Will the licensor have a right to use the modifications and derivative works made by the licensee (grant back)? If the license scope includes a right to modify, enhance, make derivative works, or improve an invention, even if he changes are minor, you will need to state in the agreement how the IP ownership of these modifications and improvements will be handled.
IP ASSETS MANAGEMENT SERIES Do you want to be able to sub-license the technology in its original or
modified form to other persons? This is a difficult issue that is often not foreseen. Are there other entities that will have to be involved in preparing your product and who will also need to have a license to the technology (e.g. research and development partners or distribution partners)? Will they need the same scope of rights as you have? From the licensor’s point of view, it is a good idea to limit sub-licensing of important technologies because broad scope sublicensing risks loss of control and accountability for the technology.
This is often called “porting” technology to another “platform”. Even if they say only “minor modifications” need to be made, this can be important and must be dealt with in the license.
With respect to any modifications, who will own these modifications?
Will the licensor have a right to use the modifications and derivative works made by the licensee (grant back)? If the license scope includes a right to modify, enhance, make derivative works, or improve an invention, even if he changes are minor, you will need to state in the agreement how the IP ownership of these modifications and improvements will be handled.
IP ASSETS MANAGEMENT SERIES Do you want to be able to sub-license the technology in its original or
modified form to other persons? This is a difficult issue that is often not foreseen. Are there other entities that will have to be involved in preparing your product and who will also need to have a license to the technology (e.g. research and development partners or distribution partners)? Will they need the same scope of rights as you have? From the licensor’s point of view, it is a good idea to limit sub-licensing of important technologies because broad scope sublicensing risks loss of control and accountability for the technology.
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