As an IP owner you may want to allow someone else to use your IP possibly in return for payment or some other form of remuneration. Alternatively, you may wish to use some else’s IP (without infringing their rights). Permission to use IP is granted under an IP Licence.
The most common IP Licence that most businesses will encounter are software licences, ranging from the “take-it-or-leave-it” pro-forma Microsoft Office type licences, to licences of highly configurable software made specifically for your business or business type.
Whilst the principle behind an IP Licence is simple – to give permission to use IP – the detail is far from simple. Thought needs to be given to whether the licence of the IP is to be exclusive (thus preventing the owner of the IP using the IP), sole (allowing both the IP owner and licensee to use the IP, but preventing any other licences being granted) or non-exclusive.
In addition, the IP may only be licensed for a specific purpose or field of use. A simple example would be the exclusive licence of the copyright in a book, such as Harry Potter, to make a film out of the book. Although exclusive, this still leaves it to the IP owner to licence the copyright for a stage or theatre productions.
Most licences of IP are paid for by way of a royalty. Consideration of how this is to be calculated is also an issue that the parties must decide on. For instance, is it per unit of product sold, gross profit per unit or some other method. In this regard, there is rarely an “industry standard”.
It can also be useful to put IP Licences in place in the context of a group of companies. It is not unusual to see company structures having a company whose sole purpose is to own the IP of the group. Such IP can then be licensed for an appropriate royalty to other companies within the group, which can assist companies in moving money around a corporate group. Also, where the IP right is a trade mark, putting such licences in place will enable use by other companies in the group to count as use by the registered owner, which may assist in preserving the trade mark registration against non-use attacks.
If you would like assistance on how you can extract value from IP Licensing please call us today.
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"Marshall IP Group has been assisting SAI Global with its trade mark, IT and other intellectual property agreements for over 4 years now. They have demonstrated a good understanding of our businesses and services and this commercial understanding is applied to the legal advice and assistance they have provided. They have shown expertise beyond their size and (regional) location and an ability to stand their ground against their City counterparts: you get the quality of a city law firm partner but you are not charged the big city law firm rates. They are pro-active, commercially sensible and this has given me, as a busy in-house Corporate Counsel and Company Secretary, peace of mind in relation to SAI Global’s national and international IP Portfolio and other legal needs. "Read More >
"Marshall IP Group has been a supporter of the iAccelerate from its very beginnings. iAccelerate is a state of the art incubator for start-ups and early stage technology businesses located at the University of Wollongong’s Innovation Campus. Marshall IP Group’s CEO, Tim Marshall, has provided thorough, thoughtful and insightful contributions to iAccelerate providing informative seminars, workshops and advice for many of iAccelerate’s companies. Marshall IP Group demonstrates a commitment to the innovation agenda for Australia and the Illawarra region. "Read More >
"Marshall Legal helped us out with a particularly nasty allegation of IP rights infringement. They quickly got to the nub of the problem and navigated the complex regime of trade marks and copyright law to diffuse the situation. Not only were the allegations withdrawn but we got our costs back. I would recommend Marshall Legal; not only did they get us a great result, they put our minds at ease throughout the proceeding."Read More >
"I am delighted to recommend Tim Marshall and the team at Marshall IP Group for all aspects of intellectual property and technology law. Marshall IP Group fills an important space in the legal market in regional Australia and Australian capital cities. The businesses that I am heavily involved in, RMB Lawyers and Unison Outsourcing, have both enjoyed excellent advice and customer service from Marshall IP Group in relation to trade marking our businesses and protecting our brand."Read More >
"Nobody likes to have to fight a court case and especially one against an internationally based company, but that was what we found ourselves facing in 2012. We were so lucky we found Tim Marshall of Marshall Legal. We highly recommend his services to anyone who wants a good business lawyer that gives good solid advice on all matters, including Intellectual property matters, trademarks and Patent attorneys who have proved invaluable to our business"Read More >
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