International business law includes a wide range of legal issues such as international licensing, international trade law, international arbitrations, and global ecommerce. Structuring software and technology licensing and development. We also advise in relation to open source software issues. International licensing agreements wolters kluwer legal. Hardware and software technology licensing agreement. Software licensing is a complicated topic, but knowing a little about software licensing can help you make sense of all that fine print.
Technology licensingtechnology licensing technology licensing is a contractual arrangement in which the licensers patents, trademarks, service marks, s, trade secrets, or other intellectual property may be sold or made available to a licensee. The book addresses four principle types of it contracts. Fundamental tools and best negotiation strategies for 2018 and beyond. Sample licensing agreements harvard office of technology.
One of the rules in the licensing agreement is usually a financial arrangement to pay for use of the license. Michael shares his framework of thinking for winwin. Most licensing agreements have standard clauses to cover the issues that arise most often in licensing negotiations. Licensing agreements are used whenever the owner of an item, such as an invention, a trademark or product, wants to give someone else the right to use and deal with that item. Technology licensing is not limited to the manufacturing sector. Trust these complex negotiations to counselors who have specialized experience with technology and the way it is acquired. Negotiate and prepare technology transfer and licensing agreements that. Denver taxpayers will be paying millions of dollars more this year for city use of oracle software after the city admitted it violated its licensing agreements with oracle and was threatened with. Exchanging value, negotiating technology, licensing agreements. You will be amazed what a difference it makes when your team has the benefit of a lawyer who speaks tech.
If the licence is worldwide, the exclusivity implies that the licensor abstains from. Technology licensing may also be used to acquire foreign technology through cross licensing agreements or grantback clauses that award rights to improved technology developed by a licensee. Successful technology licensing preparation for technology licensing negotiation begins with the parties asking themselves a series of questions. The licensees rights are dictated by the agreement, but can include rights such as selling the item or using the trademark on his own products. A joint venture may consist of any variety of business relationships that involve two or more enterprises pooling their resources with the objective of. In the case of software licensing royalties based on the number of users and. They provide ready access to exemplary software agreements that are inplace and available for use.
Software license agreement essentials klemchuk llp. Take the complexity of technology and stir in the jargon of the legal system and what do you get. Licensing is a contractual arrangement whereby the firm, the licensor, offers proprietary assets to a foreign company, the licensee, in exchange for royalty fees. A checklist for negotiating license agreements donna bobrowicz, technology transfer specialist, loyola university chicago, office of research services, u. Technology licensing may also be used to acquire foreign technology through cross licensing agreements or grant back clauses that award rights to improved technology developed by a licensee. Michael kosic, ceo, xyz interactive, highlights deals his company has made with his proprietary technology, gesturesense and beaconsense. However, international licensing of intellectual property, software or technology confronts the contracting parties with its own distinct challenges. Successful technology licensing ip assets management series. International licensing agreements is an excellent guide to the complex world of international licensing agreements grouping together all the essential materials needed when considering crossborder licensing agreements. A software license agreement details how and when the software can be used, and provides any restrictions that are imposed on the software. Dec 15, 2017 for these reasons, it is generally considered unwise for a company to include its core, businesscritical technology patents in cross licensing agreements.
A licensing agreement refers to a written agreement entered into by the contractual owner of a property or activity giving permission to another to use that property or engage. Our research centers showcase some of the ways we are surpassing the limits of todays technology. The book describes each clause typically found in a technology agreement, outlines the issues at stake, and offers negotiation tips and sample contract language. However, international licensing of intellectual property, software or technology. Licensing and development agreements should include key provisions such as ownership, indemnification, liability, and payment structure. See, overview of contractual agreements for the transfer of technology and ip licensing. Seek legal advice to determine liability where licensing is involved.
In a globalized economy, technology licensing and transfer of technology are important factors in strategic alliances and international joint ventures in order to maintain a competitive edge in a market economy. Denver admits software licensing violations cbs denver. Sample license agreement with exclusive patent rights. Drafting international technology licensing agreements the. International licensing agreements ip, technology transfer and competition. Negotiated and prepared a wide range of technology agreements including licensing and assignment agreements. In the international software license agreement, the owner of the rights to use a certain software the licensor authorises a third party the licensee located in other country to use it, in exchange for a price. The world intellectual property organization wipo and the. Entering a foreign market through licensing the balance. Klemchuk llp is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation.
Procopios attorneys bring decades of specialized experience serving fortune 50, 100 and 500 companies in both domestic and international matters to resolve the most complex issues associated with licensing agreements. As regards software, most of the searches are performed on internet through web blogs. Whether you are in the position of selling licenses to your technology or buying third party technology licenses, we have the experience. The office of technology development provides a onestop shop to advance the development of groundbreaking discoveries by fostering strategic collaborations with industry through licensing, sponsored research and new venture agreements. Software as an asset for technology transfer european commission. The pros and cons of licensing technology by toni hickey, william barrow and charles harris august 3, 2018. Our international law attorneys work with clients to navigate international licensing transactions. Our global technology transactions group structures and negotiates agreements and provides sophisticated, business advice on the legal and commercial issues that arise in complex multijurisdictional technology and iprelated transactions, including mergers and acquisitions, software and information technology licensing and procurement, patent. Zaharoff is a business attorney who handles intellectual property, licensing, contracts, technology, publishing and matters for business clients including software publishers, internet and ecommerce businesses, life sciences ventures and medical device companies, experienced in domestic and international technology acquisition, distribution and. The following is intended for general information only, regarding some of the issues relating to businesses operating in saskatchewan. Public research software dissemination a view from the open source industry.
There are many reasons to have one in place, so if you do not yet have one, it is time to start understanding its ins and outs. These questions must be answered whether the party is the licensor the one who owns the ip and gives the license or the licens ee the one who wants to use the ip and wishes to receive the license. The dramatic increase in new technologies has made international software license agreements one of the most common forms of contracting. A note on global accessdevelopment of technologies borne from harvard patent rights may lead to licensed products that. Lets say you are unable to export to an overseas market due to complex rules and regulations or because the transportation cost is prohibitive.
Lawson lundells technology group provides advice to domestic and international technology clients and investors, tailoring our advice and strategies to suit a companys stage of development, whether emerging, earlystage, highgrowth or. A software license agreement is the legal contract between the licensor andor author and the purchaser of a piece of software which establishes the purchasers rights. Lawson lundells technology group provides advice to domestic and international technology clients and investors, tailoring our advice and strategies to suit a companys stage of development, whether emerging, earlystage, highgrowth or established. Procopios attorneys bring decades of specialized experience serving fortune 50, 100 and 500 companies in both domestic and international matters to resolve. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The basics of software license agreements if you create software for customers, then you need to consider creating a software license agreement to help protect you and your business. The basics of software license agreements legalnature.
Nov 14, 2012 to take the products to market, they must enter licensing agreements with the owner of the preexisting software or technology. From software and mobile computing to quantum computing and ai, to virtual and augmented reality, we are a leader in transforming technology. This article was adapted from an article authored by chris peters in march 2009. International technology licensing agreements by pam haidengerbains, q. Toward that end, this booklet provides a primer on licensing in general, with a focus, where appropriate, on licensing basics and related issues of interest to technology and life sciences companies. Contact a licensing executive to discuss obtaining a license. As with software development agreements, we give practical advice and try to strike a sensible commercial balance between what the techies have specified, what the lawyers want in an ideal world and what the businesses actually need.
Licensed patents means the patents, patent registrations and patent applications. What are the elements of a standard licensing agreement. Rimons technology licensing attorneys combine legal and business expertise to help companies across the spectrum of their technology licensing needs. To take the products to market, they must enter licensing agreements with the owner of the preexisting software or technology. We advise you to seek specific legal advice prior to making. Feb 29, 2016 michael kosic, ceo, xyz interactive, highlights deals his company has made with his proprietary technology, gesturesense and beaconsense. There are many reasons to have one in place, so if you do not yet have one. Therefore, licensing can be attractive for small companies or companies with little international trade experience. Technology spend for mission critical hardware and software can make a significant impact on a firms bottom line. Software license agreements and software ownership agreements ip professional services agreements cloud services. The programme offers a comprehensive overview of all the key matters to be considered by the licensor and the licensee when dealing with international technology transfer and licensing agreements. Nov 21, 2018 licensing agreements are used whenever the owner of an item, such as an invention, a trademark or product, wants to give someone else the right to use and deal with that item. For information on the ibm international program license agreement please go to software license agreement.
Indeed, while the outbound licensing of technology offers a practical approach for businesses to generate new revenue streams, ip owners must. Software development, licensing and services technology. Technology transfer agreements concern the licensing of technology where the. Technology agreements technology licensing attorneys in dc. Like any contract, an international licensing agreement spells out the rights and obligations of the contracting parties. Patents means united states and foreign patents and utility models and. By bringing together attorneys from our intellectual property and corporate groups who consult with other practice areas as needed, we provide unified counsel on all facets of ip licensing and technology transactions. Enhanced software licensing agreements these enhancements of existing agreements reduce the costs and complexities involved with federal acquisition of commercial software. A joint venture may consist of any variety of business relationships that involve two or more enterprises pooling their resources with the objective of implementing a common business purpose.
Western canadas technology industry is one of the most active in canada. Whether you are using licensing to develop technology, expand or create market opportunities, develop technology, or generate returns from existing assets, managing licensing transactions requires a broad and deep toolkit. The good, bad and ugly of crosslicensing your technology patents. Technology licensing may also be used to acquire foreign technology through crosslicensing agreements or grantback clauses that award rights to improved technology developed by a licensee. Licensing basics for technology and life sciences companies. Sep, 2019 licensing is a contractual arrangement whereby the firm, the licensor, offers proprietary assets to a foreign company, the licensee, in exchange for royalty fees.