This license checklist is a comprehensive tool that is useful for entering very important concepts and terms into a complex license. Nevertheless, the checklist can and should be amended by each institution to reflect the way it does business. If the negotiator and licensor have key concepts with a quick reading of a checklist, it can avoid a lot of problems and potential misery if an agreement were to be bad during its lifetime. It is much cheaper to create a solid license in advance and best define the key concepts than to solve the problem later through arbitration or litigation. The one-time payment of________________________________Stock of_______________________________Annual service fee of______________________________for agreement_______________________for term__________________________If duration of declared intellectual property is annulled: the granting of a sub-licence right to third parties also has a series of important decisions to be taken into consideration by the parties when awarding this part of the licence. Sublicenses can be anyone or, for example.B. be limited to parties related to the licensee; only the licensee`s related undertakings; a limited number of third parties; or only those parts that have been previously approved by the licensor. (h) with the right to grant rent______ sublicenses______, lease______. The period of termination of an agreement can be quite complicated, or it can be very simple. I have seen suspended agreements to determine what has to do with the rights of the parties in the event of a major breach.
It is worth thinking about this area, but be careful not to assume the negotiations. Among the areas to be considered is the right of one of the parties to terminate the agreement without reason; the rights of the party that has provided services when confronted with a party that refuses to provide the service; significant offences; and the duration of the notification of the hurtful activity and the time given to the injuring party to remedy the infringement before losing rights and/or imposing sanctions. Issues relating to the natural course of the licence should also be taken into account. What will happen to the know-how (if any) after all patents expire? And what are the privacy rules? Assignment (close) A transfer of intellectual property (IP) rights. For example, the assignment of a patent is a transfer of sufficient rights, so the recipient has the right to obtain the patent. An assignment can be a transfer of all exclusivities on the patent, a transfer of an unditified part (e.g. B a 50 per cent stake) or a transfer of all rights to a given location (e.g. B a given territory of the United States). Everything else is considered a license transfer and not a patent transfer.
Exclusive license with the right to continue as nonexclusive______Whenever all essential claims held invalid______. In some cases, either either party does not want its name to be used in combination with licensed products that are advertised or sold, as this may indicate that the licensing institution recommends those products….