Our team at Bay State IP provides representation on the transactional aspects of all areas of Intellectual Property, including drafting licensing agreements, along with preparing non-disclosure and confidentiality agreements. Whether you are looking to sell the rights to your Intellectual Property or conversely looking to acquire someone else’s assets, our team is able to work with you through negotiations to ensure you receive the maximum benefit for your assets.
What Can Bay State IP Do For You?
Our team at Bay State IP provides representation on the transactional aspects of all areas of Intellectual Property, including IP licenses, assignment & transfer agreements, security agreements, as well as non-disclosure/confidentiality agreements. Whether you are looking to sell the rights to your Intellectual Property or conversely looking to acquire someone else’s assets, our team is able to work with you through the negotiation process to ensure you receive the maximum benefit.
Types of Licensing:
- Brand Licensing
- Patent Licensing
- Music Licensing
- Software Licensing
- Compulsory Licensing
- Cross Licensing
Trademarks Licensing & Assignments
An owner of a mark (the “licensor”) may wish to authorize the use of the mark to a third party (the “licensee”) without relinquishing ownership rights in the mark and related goodwill the owner has built up. The parties can choose to enter into a trademark licensing agreement which can be tailored to the needs of the licensor and licensee. Trademark licensing agreements can be express or implied, exclusive or non-exclusive, perpetual or fixed, royalty-bearing or royalty-free, and assignable or nontransferable.
In every licensing agreement there must be minimum provisions to ensure the control of the quality of the goods or services associated with the mark. Our team at Bay State IP will provide your mark with the best protection when constructing licensing agreements to avoid unrestricted use called “naked licensing”, which could result in the loss of the trademark.
Over the course of a brand’s life it is conceivable that the trademark will be assigned to several different parties. Trademarks serve as indicators of source and quality, so when a trademark is being sold it must be accompanied with the tangible assets to continue the business in which there is substantial goodwill built up in the associated mark.
Just like other forms of Intellectual Property, copyrights may be licensed as well. Owners of copyrighted material often enter into licensing agreements to get the most from their IP assets by licensing out the different rights that are available to them as an owner. Our team is skilled at drafting customized copyright licensing agreements for:
- Musical works
- Literary works
- Dramatic works
- Choreographic works
- Architectural works
- Software code
- Motion picture and other Audiovisual creations
Licenses construct boundaries that the licensee must obey when using the copyright and can dictate the type of use, how many times it may be used, and the duration of the license. Copyright licensing agreements can be exclusive or non-exclusive, perpetual or fixed, royalty-bearing or royalty-free, and assignable.
Patent licensing is a way for inventors and owners of patents to realize a profit from the patent by means of regular royalty payments or upfront payments. Patents can be owned individually, jointly, or partially. The laws that govern the process of patent licensing and the requirements of both parties in a licensing agreement differ between countries. When licensing a patent the licensee can receive all of the benefits of ownership giving the licensee the ability to sub-license or cross-license the patent.
A patent license can be either exclusive or non-exclusive. An exclusive license may allow the patent owner to obtain a larger sum of money or higher royalty payments because the licensee is paying to exclude others from obtaining the invention and the ability to stop infringers. Non-exclusive patent licensing is when the patent owner licenses the invention to one or more parties without the promise that they will be the only ones to get access to the patent. A license may include other grants and restrictions that the parties want such as limiting usage to geographical areas or to specific time frames.
Cross licensing is an agreement where two or more parties grant a license to each other for the utilization of the matter claimed in the patents. These types of agreements are often formed to avoid infringement disputes and to make it harder for new entrants to the industry.
At Bay State IP our specialized team will work to get a client the best possible outcome in a licensing agreement whether they are looking to acquire or license their Intellectual Property.