Best Practices in Licensing
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Transcript Best Practices in Licensing
Best Practices in Licensing
Diane M. Reed
Knobbe, Martens, Olson & Bear
Rouz Tabaddor
Vice President, Chief IP Counsel
Corelogic Information Solutions, Inc.
Who is the Licensee?
Defining the licensee
Affiliates?
Subsidiaries?
Sublicensees
Patent License
Trademark License: quality control
Software License Open Source issues
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© 2011 Knobbe Martens Olson & Bear LLP
Who is the Licensee?
Limiting Assignment of the Licensed IP
Licensee shall not grant, assign, sublicense or
otherwise convey or transfer … without Licensor’s
prior written consent and any attempted transfer or
assignment shall be null and void.
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© 2011 Knobbe Martens Olson & Bear LLP
Who is the Licensee?
Limiting Assignment of the Licensed IP
Except in connection with the sale or all or
substantially all of the assets or business of Licensee,
Licensee may not assign or transfer … without
Licensor’s prior written consent.
Who is the Licensee?
Limiting Assignment of the Licensed IP
Licensor grants to Licensee a non-exclusive, nontransferable (except in conjunction with the sale of all
or substantially all of Licensee’s business and assets
related to the Project), non-sublicensable, perpetual,
irrevocable, right and license to….
Who is the Licensee?
Change in Control
Right to terminate for no cause
Specific termination right:
• Triggered by any change of control
• Require notice
• Licensor can terminate
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© 2011 Knobbe Martens Olson & Bear LLP
Who is the Licensee?
Right of First Refusal
• To acquire the Licensee
• To buy back the License
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© 2011 Knobbe Martens Olson & Bear LLP
Best Practices To Monitor Performance:
Monitoring the Licensee’s Performance
Paying on all Licensed Products?
Accurate royalty statements?
Are expenses properly deducted?
Complying with territorial restrictions?
Complying with market limitations?
Selling competitive products?
Properly using trademarks
Using proper patent marking
Sublicensee compliance?
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© 2011 Knobbe Martens Olson & Bear LLP
Best Practices To Monitor Performance:
Typical Auditing Provisions:
Types of records to be kept
How long to keep books and records
How frequently can you audit?
What time period can the audit cover?
Who pays for the audit?
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© 2011 Knobbe Martens Olson & Bear LLP
Best Practices To Monitor Performance:
Audit provisions:
What information do you need from the licensee?
How often do you need the licensee to report?
Requirement to keep books and records
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How long must records be kept?
Who can inspect?
How often?
© 2011 Knobbe Martens Olson & Bear LLP
Best Practices To Monitor Performance:
Practice Tips
Docket all payment due dates
Establish collection procedures
Keep records of all payments
Track trends in royalty reports
Review licensee press releases and financial reports
Review licensee product literature for new products
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© 2011 Knobbe Martens Olson & Bear LLP
Best Practices To Monitor Performance:
Why an Audit Might be Necessary
Royalty calculations are prone to mistakes
Accounting errors
Disagreements about which products are royalty
bearing
Disagreements on how Net Sales are calculated
Identify payment deficiencies
Deterrent
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© 2011 Knobbe Martens Olson & Bear LLP
Best Practices To Monitor Performance:
Why an Audit Might be Necessary
Avoid statute of limitations
Feedback to improve future license agreements
Improve the licensee reporting process
Better understand how licensed property is used
Good deterrent, but expensive
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© 2011 Knobbe Martens Olson & Bear LLP
Best Practices to Avoid Unnecessary Risk
Representations and Warranties
Typical reps and warranties
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Ownership
License to IP not owned
Right to grant the license
Validity – knowledge only
No Infringement – knowledge only
© 2011 Knobbe Martens Olson & Bear LLP
Best Practices to Avoid Unnecessary Risk
Reps and warranties to avoid
Patent validity or scope
No infringement
Indemnification and Insurance
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© 2011 Knobbe Martens Olson & Bear LLP
Best Practices to Avoid Unnecessary Risk
Patent Marking
Persons found liable for false patent marking “[s]hall
be fined not more than $500 for every such offense.”
Any person may sue for the penalty. One-half of the
penalties go to the person bringing suit, and the other
half go to the U.S.
In Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295
(Fed. Cir. 2009), interpreted the statute as requiring
penalties be imposed on a per article basis
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© 2011 Knobbe Martens Olson & Bear LLP
Best Practices to Avoid Unnecessary Risk
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Be very clear about patent marking requirements
Consider indemnification for false marking
Require licensees to police sublicensees
© 2011 Knobbe Martens Olson & Bear LLP
Best Practices to Avoid Unnecessary Risk
Termination rights.
What are the triggers?
What happens on termination?
What if the license is irrevocable?
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© 2011 Knobbe Martens Olson & Bear LLP
Thinking About Dispute Resolution
Arbitration/Mediation – cast a broad net to cover all
disputes
Disputes related to breach of the agreement
Disputes arising under the agreement
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© 2011 Knobbe Martens Olson & Bear LLP
Provisions Unique to the IP Being Licensed
Patent License
License rights under the patent
License rights to make a certain product covered by
patents
Is Know-how included?
Ownership of improvements
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© 2011 Knobbe Martens Olson & Bear LLP
Provisions Unique to the IP Being Licensed
Trademarks
Quality control
Goodwill
Indemnification
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© 2011 Knobbe Martens Olson & Bear LLP
Provisions Unique to the IP Being Licensed
Copyright
Right to create derivative works
Written assignment of newly created works
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© 2011 Knobbe Martens Olson & Bear LLP
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