LICENSING INTELLECTUAL PROPERTY
Disclaimer: The following material is informational and general in nature and not intended to be offered as legal advice. To obtain legal advice an attorney should be consulted with the specific facts of your case.
1.0 Definition of intellectual property
1.1 Intellectual property collectively refers to many different categories of intangible property including patents, trademarks and unfair competition, copyrights, trade secrets, know how, trade dress, confidential information, plant varieties, rights of publicity and semi conductor mask works, among others.
1.1.1 Intellectual property, as with all forms of property inherently contains certain rights associated with it:
18.104.22.168 The right to transfer ownership of the intellectual property as by sale, gift, assignment, inheritance.
22.214.171.124 The right to license the intellectual property to others without transferring ownership. In essence, a license is a contract not to sue another party for using intellectual property owned by another.
2.0 Requirements of an intellectual property license:
2.1 Ownership of the intellectual property (or the permission of the actual owner to grant a license);
2.2 Intellectual property must be legally protected or at least eligible for legal protection;
2.3 Specificity of the rights to be granted by the license; and
2.4 Rights reserved by the licensor.
3.0 Types of licenses:
3.1 Technology Licenses deal with patents, patentable inventions, know how, trade secrets, confidential information and copyrights in material such as computer software, instruction manuals, databases;
3.2 Publishing and Entertainment Licenses. These licenses are directed to copyrights in creative works such as music, books and plays. Trademarks relating to these works are sometimes also included in a publishing license;
3.3 Trademark and Merchandising Licenses. Trademarks, trade dress, trade names are covered under such licenses.
4.0 Exclusive Licenses.
4.1 An exclusive license conveys specified intellectual property rights to a single entity (i.e., company, individual or organization) only.
4.1.1 An exclusive license may be restricted to a limited field of use or be unlimited in field of use.
5.0 Non-exclusive Licenses
5.1 A non-exclusive license conveys specified intellectual property rights to more than a single entity (i.e., company, individual or organization).
6.0 Unlicensable Subject Matter.
6.1 Statutory protection affecting the interest of more than one intellectual property owner.
6.2 Statutory preclusion of licensing intellectual property.
6.2.1 An example of this would be a license on a patent which lasts for five years from the beginning of the license, yet the patent expires only three years into the five year period. Such a license would likely be unenforceable on its face.