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Welcome to the Licensing Lawyer Blog!

December 19th, 2017
Welcome to the Licensing Lawyer Blog!
The Licensing Lawyer Blog has a razor-sharp focus on licensing and only licensing. more »

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Optons, Rights of First Negotiation and Refusal: Do you Really Have Anything?

December 1st, 2017
Optons, Rights of First Negotiation and Refusal: Do you Really Have Anything?
Last time, we talked about ways to allocate rights to "joint" inventions that are made as part of a technology collaboration of some sort.  Here are a couple other thoughts on joint inventions:  Be very careful about inventorship.  If your are trying to… more »

2 comments

Comment from: larry_schroepfer [Member]  

Comment received off-line, that I thought was excellent:

Larry:

Always enjoy your posts. Of course the university can negotiate real terms into the negotiation right, there are plenty of ways around the tax issue, but only a small percentage of universities have the sophisticated legal office that can do it. Here’s the real reason what you suggest is not done in the university space in corporate sponsored research agreements. The sponsoring corporations aren’t interested. Only one in three disclosed inventions gets licensed. Fewer than one in 10 corporate sponsored research agreements result in an invention. Therefore only about 1 in 30 results in a technology that is licensable, and even that one may not be desired by the sponsor. So the sponsors have no desire to spend legal costs doing 30 negotiations (or more) for every one that they actually complete. And the sophisticated ones also know that so long as they have the first right, they can get the license for a cost they desire, as usually they are the only entity interested.

06/08/16 @ 17:05
Comment from: ericlkelly [Member]  
Eric

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06/13/16 @ 06:59

Most Favored Licensee: The Licensor's Clause from Hell

November 17th, 2016
Most Favored Licensee: The Licensor's Clause from Hell
Last time, we talked about ways to allocate rights to "joint" inventions that are made as part of a technology collaboration of some sort.  Here are a couple other thoughts on joint inventions:  Be very careful about inventorship.  If your are trying to… more »

1 comment

Comment from: Dave Kingston [Visitor]
Dave Kingston

A great point- cases differ dramatically per case, so it is important to take in factors that affect licensing, such as the selling information, the seller, the market and so on. Indeed, leverage is also an important factor. A great resource I came across that may help to give more information regarding licensing law can be found here http://www.garrattssolicitors.co.uk/business-legal-services/licensing.html

09/22/17 @ 08:40

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Rights to Improvements -- Conclusion

October 19th, 2016
Rights to Improvements -- Conclusion
Improvements:  The hardest problem of all (Part 3) Last time, we talked about the problem of improvements made by either party to the licensed technology, why I believe allocating rights to each party's improvements is the hardest issue of all, and some… more »

1 comment

Comment from: drllau [Member]  
Lawrence Lau

so the pooling of improvements is basically an express assignment back to owner with grantback? how would this work on an international scale (set up an IP holding entity in say Netherland Antilles with innovation box?)

10/03/14 @ 12:26

Rights to Improvements -- Part 2

October 1st, 2016
Rights to Improvements -- Part 2
Improvements:  The hardest problem of all (Part 2)  Last time, we talked about the problem of improvements made by either party to the licensed technology, and why I believe allocating rights to each party's improvements is the hardest issue of all.   S… more »

3 comments

Comment from: rossvesq [Member]  
Ross

As I often represented the licensee my preferred argument was whomever paid for the improvement owns it. If you license to me a Christmas tree, but I pay for the ornaments, I’m taking the ornaments with me when I’m done with the tree. If the licensor is willing to reimburse me for the cost of the ornaments, then he gets to keep them (or at least get a license to use them too). You offer up some good alternatives that work for various situations not amenable to a "whomever pays" rule that I favor.

11/19/14 @ 14:30
Comment from: larry_schroepfer [Member]  

I certainly understand the "whomever pays" rule, and I’ve often seen it argued (and employed), but as a licensor, my argument to you would be that I’ve factored rights to your improvements into the license/royalty price that I’ve set. Using your analogy, I’d say that if I’m the one that gave you the platform (Christmas tree) without which the ornaments would have no value in the first place, I ought to be entitled to share in the value (ornaments) that I enabled. At at a very minimum, I shouldn’t be prevented from creating my own ornaments if you patent "ornaments" as a result of working with my tree!

All of which reinforces my belief that rights to improvements really is the hardest non-financial problem of all!

11/19/14 @ 16:46
Comment from: drllau [Member]  
Lawrence Lau

How do you triage between fixtures, fittings and furnishings? Obviously I’m generalising here but let’s use the analogy of the original licensed/rented property being a apartment with a shared commons area. You can have a sub-tenant either add
- a new lamp fixed quasi-permanently to the wall
- lightbulb (temporary)
- or lampshade at whim

so you can have intangibles in similar categories. Classic example would be 3D games with engine plugins, user-custom items (which only work within game) and skins.

11/22/14 @ 10:18