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Licensing Intellectual Property Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg, Ohio Detroit,

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Presentation on theme: "Licensing Intellectual Property Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg, Ohio Detroit,"— Presentation transcript:


2 Licensing Intellectual Property Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg, Ohio Detroit, Michigan © 2007 Fraser Clemens Martin & Miller LLC All Rights Reserved Rick Martin Regional Growth Partnership June 28, 2007 Dana Center

3 Intellectual property can be your companys most valuable assets n Patents n Trademarks n Copyrights n Trade Secrets n Technical Know-How

4 But How Do I Commercialize My Intellectual Property? n I can make it and sell it myself n With everything involved in that Or… n I can license someone else to make and sell it for me n And sit on my boat collecting royalties n The latter course involves licensing my IP n Which is what we are here to talk about

5 A Little Review

6 Patents n A patent covers an invention or an improvement to an invention n The invention must be new, useful and unobvious n A patent is the grant of a negative right – the right to exclude others from making, using, or selling the invention n The claims of the patent identify the invention covered by the patent n And patents can be licensed

7 Trademarks

8 What do we call this thing? n Selection of a trademark is a very important process n Trademarks can be quite valuable n And trademarks can be licensed

9 Trademarks What are they? n Trademarks are often called Brands n Any word, name, symbol, device, or combination thereof n Used to identify your goods n And distinguish them from the goods of others n Trademarks are source identifiers n Can include sounds, smells, product design, or packaging

10 Copyrights n Protect the works of authors n Which can include text, graphics, art, music, lyrics, 3- dimensional works of art, movies, dance, video, artistic performances – almost any original work of authorship n They protect the expression of the idea, not the idea itself n Copyright arises when the work is created n The author of the work owns the copyright n And copyrights can be licensed

11 Copyrights n Copyright consists of a bundle of rights: n -to copy or reproduce the work n -to distribute the work by sale n -to control derivative works n -to perform or display the work n These parts of the copyright bundle can be licensed individually or as a whole

12 Trade secrets and technical know-how n What qualifies as a trade secret? n Any valuable information n That gives you a competitive advantage n That is not generally known n And that is maintained as secret n A very important requirement n And trade secrets – or any technical know how – can be licensed

13 Licenses n A pretty simple concept n – a grant from you to someone else n – of the right to use your intellectual property n (i.e. your patent, trademark, copyright, trade secret, or technical know-how) n – in exchange for $ n What a great idea! n Lets look at a sample patent license agreement…

14 n Keep in mind that: n License agreements come in all shapes and sizes n They must be individually tailored n There are many common provisions n And many creative variations n Whats right in one instance isnt right in all instances. n Pay careful attention to what you as Licensor or Licensee wish to accomplish. But first …

15 n 1. LICENSE n A. LICENSOR hereby grants to LICENSEE, upon and subject to all the terms and conditions of this Agreement, a nonexclusive license under the Patents to make, use, and sell the systems and methods embodying the invention(s) described in the Patents, for the life of such Patents, in the Licensed Territory, as set forth in the attached Schedule A. n B. As used in the Agreement, the Patents shall mean and include the United States Letters Patents identified more fully in the attached Schedule A, along with any patents on improvements thereof. In addition, the Patents shall mean and include the following: n C. The license granted herein is subject to a reserved, nonexclusive, nonassignable license in LICENSOR to make, use, and sell the systems and methods embodying the invention(s) of the Patents. n D. LICENSEE may not grant sublicenses under this agreement

16 n 2. TERM n This Agreement shall be effective as of the date of execution by the Parties and shall expire simultaneously with the expiration of the longest-lived patent or the rejection or abandonment beyond further appeal of the last- remaining patent application comprised within the Patents, whichever occurs later, unless sooner terminated by the Parties pursuant to the terms of this Agreement (the Term).

17 n 3. COMPENSATION n A. In consideration for the licenses granted hereunder, LICENSEE agrees to pay to LICENSOR the royalty recited in Schedule A (Royalty) based on LICENSEEs Net Sales of Licensed Products where such Licensed Products are covered by a subsisting and unexpired claim, in the country in which the Licensed Product is manufactured or sold, of any patent of that country comprised within the Patents. n C. The Royalty owed LICENSOR shall be calculated on a semiannual calendar basis

18 n D. For each Royalty Period, LICENSEE shall provide LICENSOR with a written royalty statement n E. LICENSEE agrees to pay to LICENSOR an Advance against Royalties in the amount recited in Schedule A, which may be credited against LICENSEEs actual royalty obligation to LICENSOR.

19 n F. During each calendar year during the Term of this Agreement, LICENSEE agrees to pay LICENSOR a Guaranteed Minimum Royalty as recited in Schedule A which may be credited against LICENSEEs actual royalty obligation to LICENSOR. The Guaranteed Minimum Royalty shall be calculated at the end of each calendar year. n In the event that LICENSEEs actual Royalties paid LICENSOR for any calendar year are less than the Guaranteed Minimum Royalty for such year, LICENSEE shall, in addition to paying LICENSOR its actual earned Royalty for such Royalty Period, pay LICENSOR the difference between the total earned Royalty for the year and the Guaranteed Minimum Royalty for such year.

20 n G. Net Sales shall mean LICENSEEs gross sales (the gross invoice amount billed customers) of Licensed Products, less excise taxes, discounts, and allowances actually shown on the invoice (except cash discounts that are not deductible in the calculation of Royalty) and, further, less any bona fide returns (net of all returns actually made or allowed as supported by credit memoranda actually issued to the customers) up to the amount of the actual sales of the Licensed Products during the Royalty Period. No other costs incurred in the manufacturing, selling, advertising, and distribution of the Licensed Products shall be deducted nor shall any deduction be allowed for any uncollectible accounts or allowances.

21 n 4. RECORD INSPECTION AND AUDIT n A. LICENSOR shall have the right, upon reasonable notice, to inspect LICENSEEs books and records and all other documents and material in LICENSEEs possession or control with respect to the subject matter of this Agreement. LICENSOR shall have free and full access thereto for such purposes and may make copies thereof. In no event shall LICENSOR have the right to examine information with respect to LICENSEEs costs, pricing formulas, or percentages of markup. LICENSEE shall impose similar obligations on its sublicensees for the benefit of itself and of LICENSOR. n B. In the event that such inspection reveals an underpayment by LICENSEE of the actual Royalty owed LICENSOR, LICENSEE shall pay the difference, plus interest calculated at the rate of [Number] Percent ([#] %) per month. If such underpayment be in excess of [Number] Dollars ($ [#]) for any Royalty Period, LICENSEE shall also reimburse LICENSOR for the cost of such inspection.

22 n 5. INTELLECTUAL PROPERTY PROTECTION n A. In the event that LICENSEE wishes that a corresponding patent application of any other country, territory, or possession be filed, it shall notify LICENSOR of that wish, and LICENSOR shall thereupon promptly notify LICENSEE whether it will file such other patent application. Failing such agreement, LICENSOR shall at LICENSEEs notification permit LICENSEE to file such patent application and prosecute it to issuance or final rejection at its own expense. Such patent application, any patent issuing thereon, and any renewals and extensions thereof shall be added to the aforesaid Patents, and LICENSOR shall have the title thereto. n B. With the exception of patent applications filed by LICENSEE, all patent applications comprised within the Patents shall be prosecuted to issuance or final rejection by LICENSOR at LICENSEEs cost and expense. Any taxes, annuities, working fees, maintenance fees, and/or renewal and extension charges with respect to each patent application and patent subject to this Agreement shall be punctually paid by LICENSEE.

23 n 6. WARRANTIES AND OBLIGATIONS n A. LICENSOR represents and warrants that, to the best of its knowledge and belief it is the owner of the entire right, title, and interest in and to the Patents; that it has the right and power to grant the licenses granted herein; that there are no other agreements with any other party in conflict with such grant; and that it knows of no prior art that would invalidate the Patents. n B. LICENSOR further represents and warrants that, to the best of its knowledge and belief, LICENSEEs contemplated use of the Patents as represented to LICENSOR does not infringe any valid rights of any third party, and that there are no actions for infringement against LICENSOR with respect to items it manufactures and sells embodying the invention of the Patents anywhere in the world.

24 n C. LICENSEE shall be solely responsible for the manufacture, production, sale, and distribution of the Licensed Products and will bear all costs associated therewith. n D. In the event that LICENSOR shall develop any improvement to the apparatus claimed in the Patents, and later incorporate it into an improved or modified product by LICENSEE, such improved product shall be subject to the payment of a Royalty. All improvement made by the LICENSEE shall be promptly disclosed to LICENSOR and shall hereinafter become the property of LICENSOR. LICENSEE hereby agrees to execute any and all documents necessary to perfect LICENSORs rights in such improvements.

25 n 8. TERMINATION n A. Immediate Right of Termination. LICENSOR shall have the right to immediately terminate this Agreement by giving written notice to LICENSEE in the event that LICENSEE does any of the following: n 1. Fails to obtain or maintain product liability insurance in the amount and of the type provided for herein; n 2. Files a petition in bankruptcy or is adjudicated a bankrupt or insolvent, or makes an assignment for the benefit of creditors or an arrangement pursuant to any bankruptcy law, or if the LICENSEE discontinues or dissolves its business or if a receiver is appointed for LICENSEE or for LICENSEEs business and such receiver is not discharged within [number] days; n 3. Fails to commence the shipment of Licensed Products within [number] months from the Effective Date of this Agreement; or n 4. Upon the commencement of sale of Licensed Products, fails to sell any Licensed Products for [number] or more consecutive Royalty Periods.

26 n B. Right to Terminate Upon Notice. Either party may terminate this Agreement upon [number] days written notice to the other party in the event of a breach of any provision of this Agreement by the other party, provided that, during the [number]-day period, the breaching party fails to cure such breach. n C. LICENSEE Right to Terminate. LICENSEE shall have the right to terminate this Agreement at any time upon [number] days written notice to LICENSOR, such termination to become effective at the conclusion of such [number]-day period.

27 n 11. CONFIDENTIALITY n Defines Confidential Information n Carves out some exceptions n Rule: Receiving party is not to disclose for X years n Public statements coordinated

28 n 12. INDEMNITY n A. LICENSEE agrees to defend, indemnify and hold LICENSOR and its officers, directors, agents, and employees, harmless against all costs, expenses, and losses (including reasonable attorney fees and costs) incurred through claims of third parties against LICENSOR based on the manufacture or sale of the Licensed Products including, but not limited to, actions founded on product liability. n B. LICENSOR agrees to defend, indemnify and hold LICENSEE and its officers, directors, agents, sublicensees, employees, and customers, harmless against all costs, expenses, and losses (including reasonable attorney fees and costs) incurred through claims of third parties against LICENSEE based on a breach by LICENSOR of any representation and warranty made in this Agreement, including but not limited to claims by a third party of infringement based on the manufacture, use, or sale of items embodying the invention of the Patents.

29 n 13. INSURANCE n LICENSEE shall, throughout the Term of the Agreement, obtain and maintain at its own cost and expense from a qualified insurance company licensed to do business in [state] and having a Moodys rating of B+ or better, standard Product Liability Insurance naming LICENSOR, and its officers, directors, employees, agents, and shareholders, as an additional insured. Such policy shall provide protection against all claims, demands, and causes of action arising out of any defects or failure to perform, alleged or otherwise, of the Licensed Products or any material used in connection therewith or any use thereof. The amount of coverage shall be as specified in Schedule A attached hereto. The policy shall provide for [number] days notice to LICENSOR from the insurer by registered or certified mail, return receipt requested, in the event of any modification, cancellation, or termination thereof. LICENSEE agrees to furnish LICENSOR a certificate of insurance evidencing same within [number] days after execution of this Agreement and, in no event, shall LICENSEE manufacture, distribute, or sell the Licensed Products prior to receipt by LICENSOR of such evidence of insurance.

30 n 15. JURISDICTION/DISPUTES n This Agreement shall be governed in accordance with the laws of the State of [State]. All disputes under this Agreement shall be resolved by litigation in the courts of the State of [State] including the federal courts therein and the Parties all consent to the jurisdiction of such courts, agree to accept service of process by mail, and hereby waive any jurisdictional or venue defenses otherwise available to it.

31 n 17. ASSIGNABILITY n Neither party may assign this Agreement or the rights and obligations thereunder to any third party without the prior express written approval of the other party which shall not be unreasonably withheld. n (or delayed) n Unless in connection with the sale of all or substantially all of the assets of a party pertaining to this agreement.

32 n SCHEDULE A n 1. Licensed Patents n The licensed Patents are as follows: [Specify licensed patents including country, pat.# and issue date] n 2. Licensed Products The Licensed Products are as follows: n 3. Royalty Rate The Royalty Rate is as follows:..... Percent (....%) n 4. Advance The following Advance shall be paid upon execution of this Agreement:..... U.S. Dollars ($....). n 5. Product Liability Insurance..... Dollars ($....) combined single limit, with a deductible amount not to exceed..... Dollars ($....), for each single occurrence for bodily injury and/or for property damage.

33 Conclusion n Intellectual property can be your most valuable assets n Make sure you know what your IP comprises n And that youve taken appropriate steps to protect it n Written license agreements are one good way to commercially exploit your intellectual property n Including: your technology, patents, trademarks, copyrights, trade secrets and technical know-how

34 Fraser Clemens Martin & Miller LLC Patent, Trademark, Copyright & Intellectual Property Counsel Perrysburg, Ohio Detroit, Michigan © 2007 Fraser Clemens Martin & Miller LLC All Rights Reserved Thank you Rick Martin

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