No universal licencing agreement model exists. Licence agreements will vary depending on the subject of the licencing activity, on the corresponding applicable law used to construe its provisions and on the circumstances of each specific case.
We draw your attention to the following issues:
In general, the scheme of a licence agreement is simple: the licensor (owner of IP rights) allows the licensee to use its IP rights. The licensee may use the licensor's IP rights to the extent established in the licence agreement; however, the formal IP rights remain with the licensor.
- While drafting a licence agreement do not forget to cover its core issues, such as: the subject of the licence (all IP rights, future IP rights, know-how), territorial scope of access rights, commercial scope and field of use of licensed rights, exclusivity/non-exclusivity of the licence, duration of effects of the licence, compensation (payments, shares, cross-licenses, etc.), royalties, applicable law (especially important in case of transnational agreements), consequences of the breach of the licence agreement, etc.
- Negotiating and drafting of an efficient licence agreement might be quite complex and sometimes requires independent professional advice so that potential legal pitfalls can be avoided.
In order not to miss the most important elements that a licence agreement should include, we suggest that you get acquainted with the guide Healthcheck booklet (in the series: Licensing Intellectual Property) which is available on the UK Intellectual Property Office homepage.
Examples of templates that may help you outline the likely content of a licencing agreement can be, furthermore, found in the ipHandbook of Best Practices.
In certain cases, having licence rights to a patent will not be enough for the licensee to use, exploit or manufacture the related invention in an efficient way. Beyond the patented innovation, the licensee will in many cases need access to the unpatented technical information which relates to it.
In such cases, instead of a mere patent licence, it may be worthwhile to conclude a “patent and know-how licence” in order for the licensor to grant access not only to its invention, but also to the technical know-how relevant thereto. This will enable the licensee to fully use and understand the invention.
Of course, licensing know-how will only make sense insofar as this know-how has been kept secret, i.e. that there is an economic value to it and a need for the licensee to gain access to that knowledge, which would otherwise not be known nor be readily accessible.
Licensing secret know-how can involve some risks linked to its potential, unwanted disclosure to third parties. For this reason, a patent and know-how licensing agreement should address questions of confidentiality and non-disclosure in a thorough manner, in order to define as precisely as possible the ways in which the licensee can use and further disclose the licensed know-how. The licensee, its staff and relevant third parties (such as possible subcontractors) should be given confidentiality obligations which are, in their scope and strength, at least as stringent as those put into place by the licensor to protect its trade secret.
Finally, special attention should be given to the duration of the intellectual property right being licensed, since the period of the licence cannot exceed the maximum duration of the right (e.g. 20 years for patents). In the case of a patent and know-how licence, this means that the parties should make a clear difference between the patent licence (which cannot last past the expiration of the patent) and the know-how licence (which the parties may wish to keep in force after the expiration of the patent).
The use of a CCL does not mean that you do not have the copyright on your work anymore. Instead, a CCL helps the creator of a copyrighted work to retain some of his rights stemming from copyright while making available to the public his work and ensures that he gets the credits for his work.
As the creator of a copyrighted work, you have the flexibility to choose which rights will be reserved by choosing among the different types of licences. However, once you use a CCL, you cannot prevent others from copying and distributing your work. Hence, if you wish to reserve all of your rights under copyright law, then you should not use a CCL.
In general terms, a CCL can be used for any copyright protected work (books, movies, etc). However, since the work released under a Creative Commons licence is governed by the applicable national copyright law, national legislation may pose restrictions to the context of the free distribution. Moreover, it is to be noticed that Creative Commons – a creator of CCL – does not recommend the use of Creative Commons licences for software.
Furthermore, Creative Commons licences are non-revocable. This means that once a piece of work has been made available under a CCL, this work, or its copies, may continue to be used only under that licence.
The Creative Commons licence (CCL) is a copyright licence that allows the user, who is not the copyright owner of a work, to distribute freely an otherwise copyrighted work. In this context, a CCL works mutually for both the copyright owner and the end-user, since it gives the author the freedom to allow people to share, use, and build upon a work that he/she has created and protects the users from a possible copyright infringement claim.
It is to be noticed that there are several types of CCLs and the users have to comply with the terms of distribution posed by the copyright owner and indicated by the respective CCL, otherwise they could be held liable for copyright infringement.
Although in both cases the licensor permits the licensee to use his/her intellectual property in return for a negotiated compensation, exclusive and non-exclusive licences refer to the degree of exclusivity that will be granted to the licensee.
In an exclusive licence, the parties agree that no other person/legal entity can exploit the relevant IPRs, except the licensee.
On the other hand, a Non-Exclusive Licence grants to the licensee the right to use the IPRs, but on a non-exclusive basis. That means that the licensor can still exploit the same IPRs and he/she can also allow other licensees to exploit the same intellectual property.
You should note, however, that this classification is not restrictive. There are also other types of licences. For example, in licences known as “co-exclusives” the licensor grants a licence to more than one licensee but agrees that it will only grant licences to a limited group of other licensees. Moreover, licences called as “sole licences” are those in which the licence is exclusive in the meaning that there would be no more licensees, but the licensor also reserves full rights to exploit his/her intellectual property.