IP LICENSING

Mrs.Annamma SamuelHEAD-Research

ALTACIT GLOBAL

WHAT IS LICENSING

LICENSE is an agreement between the owner of the IP right (LICENSOR) and another person (LICENSEE) in which the licensor permits the licensee to use the IP right in the manner and for the time period specified in the agreement.

ONLY RIGHT TO USE (NOT OWN) THE RIGHTS

ONLY IN A SPECIFIC MANNER

CATEGORIES OF LICENSING

EXCLUSIVE

SOLE

NON-EXCLUSIVE

WHY SHOULD CONSIDER LICENSING

INCOME

NEW MARKETS

MARKETING TOOL

EFFECTIVE IP LICENSE

Licensor must have ownership of relevant IP IP must be protected by Law License must specify what rights with

respect to IP it grants to the licensee Payment/other assets given in exchange of

license.

HOW TO DEVELOP A PROPER LICENSING STRATEGY

PROTECT YOUR IP RIGHTS

DEPOSIT AND REGISTER, IF POSSIBLE KEEP CONFIDENTIAL INFORMATION SECRET PLACE NOTICE ON THE WORKS

FIND RIGHT LICENSEE

LOOK FOR POTENTIAL USERS

INTERNET, LICENSING ORGANIZATIONS, SPECIALIZED MERCHANDISINGCOMPANIES

TRUSTWORTHY AND DILIGENT PARTNER

ASSESS FOREIGN MARKETS

THE LICENSEE WILL BE RESPONSIBLE FOR LOCAL MANUFACTURE, LOCALIZATION, LOGISTICS AND DISTRIBUTION

PROTECT YOUR IP IN THE RELEVANT MARKETS

IP RIGHTS ARE TERRITORIAL

INTERNATIONAL TREATIES

DIFFERENCES IN NATIONAL IP LAWS

PRESERVE CONTROL OVER THE COMMERCIAL USE OF YOUR WORKS

LICENSEE MUST PLACE IP NOTICE

REQUIRE SAMPLES OF THE PRODUCTS QUALITY

ARTWORK

DESIGN

TRADEMARK

LIMIT, AS MUCH AS POSSIBLE, THE SCOPE OF THE LICENSE

NO ASSIGNMENT OF RIGHTS

ONLY NON-EXCLUSIVE LICENSES

LIMITED IN THEIR SCOPE TO THE SPECIFIC NEEDS AND INTERESTS OF THE LICENSEE (INTENDED BUSINESS GOAL)

DRAFT A SOLID LICENSE AGREEMENT

CONTENT

IN WRITTEN + SIGNED

IN MANY COUNTRIES: MUST BE REGISTERED WITH THE NATIONAL IP OFFICE IN ORDER TO BE OPPOSABLE TO THIRD PARTIES

NEGOTIATE FAIR COMPENSATION

FEE

ROYALTY

LICENSING CONTRACT

Parties: Who will be bound by it

Subject matter: What exactly is being licensed

Goods: Types of products/services the IP right will be used for

Targeted Use: manufacture and/or distribution of the goods sale of those goods use on corresponding packaging and advertising

materials use for advertising campaign, Internet

TERRITORY

TERM

CONDITIONS AFTER TERMINATION

COMPENSATION

ADVANCE PAYMENT (FLAT FEE); PERIODIC PAYMENTS (ROYALTIES); COMBINATION

BASIS OF CALCULATION OF ROYALTIES (SALES, HITS)

TIMING OF PAYMENT

EXCLUSIVE OR NON-EXCLUSIVE?

SUB-LICENSES?

IF ALLOWED PRIOR AGREEMENT? MATERIALS TO BE PROVIDED TO THE LICENSEE

E.G. MOULD OF SCULPTURE

REQUIREMENTS AS TO THE USE OF THE WORK

REQUIREMENTS AS TO THE COMMERCIALIZATION OF THE PRODUCTS

REQUIREMENTS AS TO PUBLICITY AND PROMOTION

THIRD PARTY INFRINGEMENTS

INDEMNIFICATION CLAUSE

GENERAL CLAUSES

Types of LICENSING

Technology transfer Trademark licensing Copyright licensing Franchising

TECHNOLOGY LICENSING

May involve number of patents

May include different IP rights

CASE STUDY

Croatian Pharmaceutical Co,PLIVA Antibiotic “AZYTHROMYCIN” PLIVA lacked the manufacturing capacity,

capital to commercialise and expertise to commercialise the product.

PLIVA licensed the patent.

TRADEMARK LICENSING

Trademarks Act 1999 Permitted use Registered user Principle of Quality Control Both registered and unregistered user

should manufacture the goods only in accordance with specifications, formulae and standards of quality.

FRANCHISING

FRANCHISING IS A CONTRACTUAL ARRANGEMENT UNDER WHICH AN ENTREPRENEUR (FRANCHISOR), WHO HAS DEVELOPED A SYSTEM FOR CONDUCTING A PARTICULAR BUSINESS, ALLOWS OTHER ENTREPRENEURS (FRANCHISEES) TO USE THAT SYSTEM IN ACCORDANCE WITH PRESCRIPTIONS OF THE FRANCHISOR, IN EXCHANGE FOR A FEE.

FRANCHISOR: lends his trademark or trade name and a business system;

FRANCHISEE: pays a royalty and often an initial fee for the right to do business under the franchisor's name and system.

IP is central to franchising trademarks

trade names

industrials designs

trade secrets

MCDONALDS

70% of McDonald's worldwide restaurant businesses are owned and operated by independent businessmen and women, the franchisees

Right to use the trademarks, signs, equipment, formulas and specifications for menu items, methods of operation, inventory control, marketing, etc.

9 months full-time training

Uniformity: standard branding, menus, design layouts, administration systems

Passion for enhancing and protecting the McDonald’s brand

Quality control tests

THANK YOU FOR YOUR THANK YOU FOR YOUR ATTENTION!ATTENTION!

QUESTIONS?