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PATENT COMPENDIUM

Exploitation of patents

Patent exploitation may include the sale and licensing of patents. Especially the licensing with design of a license agreement contains several pitfalls and peculiarities.

License agreement

Scheme for license agreements

License agreement

 

A license agreement is a contract that can be either a purchase contract, rental agreement or lease contract. License agreements are made, to exploit an invention, a manufacturer can make a license agreement to distribute his products or license agreement can be reached in order to avoid court trials and potential violations by paying for a license. In general, there are no specific legal restrictions for license agreements. The contract conditions have to be adjusted to the special case, which are only limited by the antitrust and competition law. The following chapter shows a scheme for patent license agreements that at best can offer you only a simple guideline for the draft of a license agreement.

Scheme for license agreements

 

preamble

  • Motifs for the conclusion of an agreement and the intentions of the contractual parties

license granting

  • What has been licensed, contractual protective rights or know how, or is the license aimed at a specific execution or a combination from all of it.

  • Exclusive or non-exclusive license

  • Objectively content of the license, this means all kinds-of-use or solely some kinds-of-use, usage for a specific purpose.

  • Territorial scope of the license, what is the contractual territory?

  • The right to grant a sublicense?

  • Term of the contract, although no longer than the term of the existence of the protective rights.

responsibilities of the licensor

  • Who has to sustain the protective rights, respectively who pays for that?

  • Who advocates the contractual protective rights and receives if applicable claimed licenses?

  • Liability of the licensor for technical applicability and usability.

  • Liability for defects of title.

responsibilities of the licensee

  • Payment of royalties, to what amount, what is the reference value, minimum license fee or quota license.

  • Reduction of royalties because of omission or partial elimination of the protective right.

  • Exists an obligation of usage for the licensee.

  • Obligation of secrecy for the know-how.

  • Accounting obligation with auditor reservation.

common commitments

  • Mutual exchange of experiences

  • Licensing of improvement – or application inventions

  • Begin and termination of the contract

  • Coming into force

  • Grounds for dismissal, if necessary differentiated by licensee and licensor