Published on Oct 17, 2024
To start with, are you familiar with this type of license?
These licences are legal agreements between two parties that allows one party (the licensee) to use certain rights associated with another party's (the licensor) patented inventions or proprietary know-how. This type of licensing arrangement grants permission for the licensee to exploit or utilise the intellectual property (IP) owned by the licensor for a specified purpose, typically in exchange for some form of compensation.
In short, a patent licence grants the licensee the right to use, make, sell or distribute a product or service that is covered by a patent. And a know-how licence allows a licensee access to use confidential information. This might include manufacturing processes, techniques or formulas, for example.
In some cases, a single licence agreement might include both patent and know-how components.
Both patent and know-how licences can be used across many different industries, including:
Essentially, any company that has intellectual property and wants to allow others to use it can agree a mutually beneficial exchange of knowledge and resources with licensees.
A licence needs to include a clear definition of the right to use, make, sell or distribute a product or service or, in the case of know-how, details of the confidential information being licensed.
All licences must specify the scope of the rights granted and details of any limitations of use, including geographic restrictions or field of application.
Agreements should also include a duration that the licence will be in force for and provisions to protect the confidentiality of the know-how to prevent unauthorised disclosure.
There are potentially many pitfalls to be aware of when drafting or dealing with these types of licences. It is crucial to avoid these pitfalls for many reasons, but especially because they can be costly and very time consuming. When drafting or considering entering a licence agreement you must consider:
To gain a better insight into the important aspects of drafting successful patent/know-how licences join our expert trainer on either our one or two-day Avoiding Pitfalls in Patent/Know-how Licences and R&D Collaborations training courses.
Running on various dates throughout the year, these courses focus on the pitfalls and ambiguities to avoid in these agreements and take you through the stages of project management so you can achieve precision regarding IP definitions, ownership and use.
Published on Oct 17, 2024 by Angela Spall