License agreement whereas

Why do I do that? Because many jury members have about that level of education. And writing so clearly makes other lawyers refrain from even trying to mischaracterize what was written. Understand, too, that the title of an agreement, as well as the titles of sections or paragraphs, are also of little, if any, meaning.

Nothing else really matters. Generally, legal consultations cost far less than do litigations. While I am a proponent of people trying to use lawyers as little as possible, and only when necessary, any agreement that is important to you should be reviewed by an attorney experienced in those matters. Bear them in mind, and refuse to be hoodwinked by lawyers who may tell you otherwise. This you can do for yourself, by yourself, and represents great value at no risk. Now the rest is up to you.

Always be proactive. Always be creative. Always be persistent. Always be vigilant. And always do what you can to achieve for yourself, your family, and your career. The essential facts, the point illustrated and the lesson to be learned, remain actual. Definitions 1. License Grant 2. Charges 3. Intellectual Property Rights 5. Limitation of Liability 6. Confidentiality 7. Indemnification 9.

Waiver Governing Law Termination License Fee Assignment Once the patent expires, the public is entitled to make and use the invention and is entitled to a full and complete disclosure of how to do so.

Your source for expert commentary on IP management issues. Go to the blog. Bobrowicz D. A Checklist for Negotiating License Agreements. Available online at www. D Bobrowicz. Sharing the Art of IP Management : Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged. Editor's Summary, Implications and Best Practices. This chapter provides a road map for licensing professionals to identify the most common terms, contractual obligations, and other provisions that are likely to be encountered in crafting a license agreement.

Emphasis is placed on agricultural technology licenses. Since most people engaged in deal making are involved in multiple deals at the same time, important aspects can be forgotten or overlooked at any time and for any deal.

While expansive, it does not necessarily fit all contexts and is therefore intended to serve as a basis from which institutions and individuals can develop their own checklists. A checklist to aid in negotiating a licensing agreement, much less to aid in actually preparing and writing the agreement itself, may sound like a simplistic tool to an experienced negotiator or contract attorney.

After all, most people in such positions are well educated and used to dealing with multiple projects having many details in the scientific, legal, and business arenas, all at the same time. If they did not have the competence to deal with this type of work situation, they would not last long in the active, high-pressure licensing environment.

But it is precisely because of myriad details that a checklist can be life or deal saving for the working licensing officer or attorney. One of the simplest ways to make sure that a crucial or costly mistake does not happen because of an oversight is to use a tool such as the checklist presented here. This section introduces and discusses for both licensors and licensees each element of the checklist.

If your work requires you to draft license agreements, download the checklist from the online version of this Handbook where it is given without the annotations. No more last-minute telephone calls or e-mails to get information that should have been exchanged at the first meeting. Some use of background information in a contract is recommended because within a short period of time after the deal is done and the agreement signed, negotiators memories will fade and a short set of statements regarding the background of the deal may become invaluable should the contract need to be interpreted by a court or an arbitrator.

A simple contract will not need to have a section devoted to definitions, as the definitions can be presented when special terms are first encountered.

A complex document should present all definitions in one section for ease of drafting and later interpreting the contract. General terms used throughout the contract should be placed in this section, as should technical terms that are used frequently. Either an alphabetical or a hierarchical order is recommended, the latter being used when a number of terms are closely related and having them near to each other would allow the reader to more easily navigate the agreement.

Each license will have its own specific set of definitions, so a short list that includes only the most commonly used terms is presented here. All other appropriate terms should be listed and defined.

Clear definitions will add great clarity to a license. Care should be taken to write definitions that, in general, stand alone and are not circular in construction. A good place to begin thinking about what to define is with a definition of the parties. If dealing with a company, is it the company and all its affiliates? All of its subsidiaries? Or only the parent company?

Licensee, sales, net sales, profit, territory, field, patents, patent rights, intellectual property, and nonprofit are examples of other relatively common terms, and there are many more. Once defined, these terms will usually appear, throughout the rest of the contract, with the first letter capitalized or in all capitals. The following sections may seem to be overkill to the licensing professional.

However, each and every section, if not handled with care and forethought, can result in a deal that is more than unsatisfactory to one or both parties. The exact grant language should be specified. This includes which intellectual property rights the license is given under: patent right only or know-how right or both and exclusive right, coexclusive with the licensor, or nonexclusive.

Each organization will find that it tends to make deals in a certain way and may find that certain combinations of grant language will be used repeatedly. Some of what is contained in this section appears under Section 1 the parties , and may not be needed in all situations. This section is particularly important when the licensor is a nonprofit and must ensure that certain rights to use the intellectual property are reserved for academic, nonprofit research, or humanitarian uses in developing countries, or according to the terms of the Bayh-Dole Act in the United States.

The grant of a right to grant sublicenses to third parties also has a number of important choices that must be considered by parties when awarding this portion of the license. Sublicensees may be anyone or may be limited to, for example, only parties in privity with the licensee; only affiliates of the licensee; only a specified number of third parties; or only parties preapproved by the licensor.

The date the agreement begins, the effective date, should be noted, as well as the ending date of the agreement, by whatever method that is calculated.

Some of the most common ways are listed below. The consideration sections of the checklist is relatively involved, and can be cut back if equity is not part of the payment for the license.