Licensing, whether domestic and or international, provides for the specialized and general and or limited use of U.S. intellectual property law: patents, copyrights, trademarks and trade secrets. Additionally methods of disclosure of confidentail information before the license agreement is signed is and should be considered. The anatomy of a license agreement features the principal provisions of a license agreement. That part discusses strategic considerations and offers an array of forms of specific license provisions to accomplish different objectives.
These provisions often are arrayed in order from a prolicensor to a prolicensee stance. In addition to U.S. antitrust law, other considerations, through supplementation, appendices will be added to contain prime examples of integrated patent, trademark, (and franchising), copyright, and trade secret license agreements with appropriate references to treatise text to aid the reader.
Spore, Orth, Dombey & Hart can offer considerations into the Industrial Property pertinent to Licensing, including, but not limited to:
- Licensing Characteristics of Patents (considerations of express constitutional basis, statutory basis, novelty, third party use, field of use restrictions, exhaustion of patent rights);
- Licensing Characteristics of Trade Secrets (considerations f common law basis of trade secrets, substantive requirements, use in trade or business, formulas, methods and techniques or know-how, plans,designs, specifications, source of supply and choice of law, disputes);
- Licensing Charactersitics of Trademarks (considerations of trademarks vs. service marks, statutory basis, preemption, disctinction from Trade Name and Corporate Style, on products or services, package configuration, new intent to use registration system; exclusive right to Use for Class of Goods or Services);
- Licensing Characteristics of Copyrights (considerations of express constitutional basis, writings, authors, statutory basis, preemption, substantive requirements and original work considerations);
- Licensing Multiple Intellectual Property (complex hybrid licensing, desireability of distinct defenitional royalty and other treatment, packages, pools);
Contact John Spore for additional considerations for your licensing agreement(s).